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With respect to strength and the ability to be immediately registered by the US Patent and Trademark Office (“USPTO”), trademarks may be seen as existing on a continuum. At one end, there are trademarks that are inherently strong and distinctive like fanciful and arbitrary trademarks. Fanciful trademarks are invented words like GOOGLE and EXXON and arbitrary trademarks are common words used for unrelated goods or services like APPLE. Generic or common word trademarks are at the opposite end of the trademark continuum.
In the middle of the continuum are suggestive and descriptive trademarks. Suggestive trademarks are less distinctive than fanciful or arbitrary trademarks, but are still considered to be strong and easily registered. A famous example is NETFLIX.
Finally, there are trademarks that are “merely descriptive.” An example might be MICHIGAN FRIENDLY FARMS. In this example, the trademark merely describes a location and the type of business. Description is the essence of a descriptive trademark. As one court phrased it, “[t]he name of a thing is in fact the ultimate in descriptiveness.” These are weak types of trademark since they do not quickly and easily identify in the minds of consumers a unique source of commercial goods and/or services.
In general, merely descriptive trademarks cannot be immediately registered with the USPTO and listed on the Principal Register. However, descriptive trademarks CAN be registered and there are many examples of descriptive trademarks currently registered and in use. AMERICAN AIRLINES is a good example.
What is Required to Register a Descriptive Trademark?
For a descriptive trademark to be registrable on the Principal Register, it must have acquired “distinctiveness.” Legally, this is also referred to as “acquired secondary meaning.” The only method for descriptive trademarks to acquire distinctiveness is substantial, sustained, and continuous use. Indeed, if one applies to register a descriptive trademark, as part of the application, one must assert to the USPTO that the trademark has acquired distinctiveness. Further, evidence must be provided supporting this claim. Note that, if a trademark has been in continuous use for five years, such is considered prima facie evidence that the trademark has acquired secondary meaning. Thus, types of evidence that might be provided to demonstrate acquired secondary meaning include:
Even if the initial effort to register a descriptive trademark fails, a descriptive trademark can still be listed on the USPTO’s Supplemental Register. In simple terms, the Supplemental Register is a place where descriptive trademarks can be “parked” until they acquire distinctiveness. While a trademark is listed on the Supplement Register, its owner should continue to make efforts to give the trademark secondary meaning. That is, the trademark owner should continue to use the trademark and to advertise and promote the trademark with respect to the goods/services with which the trademark is used. The owner should also continue to collect evidence like consumer surveys and “mentions” in industry journals and other media.
Being listed on the Supplemental Register has some advantages including:
If you have questions about trademarks, need help creating and registering a trademark or if you are facing trademark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.
When a descriptive trademark cannot immediately qualify for the Principal Register, applicants may seek registration on the USPTO’s Supplemental Register under 15 U.S.C. § 1091. The Supplemental Register does not confer all the benefits of the Principal Register—it does not create a presumption of validity, does not constitute constructive notice, and does not grant incontestability rights. However, Supplemental Register registration is still valuable: it allows use of the ® symbol, permits the trademark owner to bring infringement suits in federal court, and serves as a basis for foreign trademark registration under international treaties.
More strategically, five years of use while listed on the Supplemental Register can be cited as evidence of acquired distinctiveness when the owner later seeks to move the mark to the Principal Register. The Supplemental Register is thus frequently used as a stepping stone rather than a final destination.
The burden of proving secondary meaning rests entirely on the applicant. The USPTO and courts apply a multi-factor analysis drawn from cases like Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), and the Federal Circuit’s guidance in Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988). The factors considered include:
Courts have held that bare length of use, without accompanying evidence of consumer recognition, is insufficient. In Cicena Ltd. v. Columbia Telecomm. Group, 900 F.2d 1546 (Fed. Cir. 1990), the court emphasized that five years of continuous use creates only a rebuttable presumption—applicants should supplement their submissions with sales data, advertising budgets, and, if possible, consumer survey evidence.
A critical distinction exists between marks that are merely descriptive and those that are deceptively misdescriptive under 15 U.S.C. § 1052(e)(1). A merely descriptive mark describes a characteristic, quality, or geographic origin of the goods or services. A deceptively misdescriptive mark, by contrast, misdescribes the goods in a way that consumers might actually believe. Deceptively misdescriptive marks face a higher hurdle: they can only be registered upon a showing of acquired distinctiveness, and even then the USPTO examines whether the misdescription materially affects purchasing decisions.
For example, a mark like SILKEASE for cotton fabric would be deceptively misdescriptive because consumers might believe the fabric is silk-based. Such a mark cannot achieve registration on the Principal Register regardless of secondary meaning unless applicants can demonstrate the misdescription is not material to consumer purchases.
When filing an application for a descriptive mark and claiming acquired distinctiveness under Section 2(f) of the Lanham Act (15 U.S.C. § 1052(f)), applicants should understand that the application is both an assertion and an evidentiary submission. The USPTO examining attorney will evaluate the totality of the evidence. Practical tips for a strong Section 2(f) claim include:
Even after a Section 2(f) claim is accepted, the registration remains vulnerable to cancellation proceedings if a third party can demonstrate the mark never actually achieved distinctiveness. A well-documented file history is the best protection against such challenges.
Contact the trademark attorneys at Revision Legal at 231-714-0100 to evaluate your path to registering a descriptive mark on the Principal Register.
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