Merely Descriptive Trademarks Under 2(e)(1)

A Section 2(e)(1) refusal is one of the most common obstacles in trademark prosecution. When the USPTO examining attorney refuses registration on the ground that a mark is merely descriptive of the applicant’s goods or services, it does not mean the application is dead—but it does require a strategic, well-argued response. Understanding what makes a mark descriptive versus suggestive, and how to construct the most effective argument for registrability, is essential knowledge for any trademark applicant.

What Section 2(e)(1) Prohibits

Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), prohibits registration of a mark that, when used on or in connection with the applicant’s goods or services, is merely descriptive of them. A mark is merely descriptive if it directly conveys knowledge of an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services. The test is applied not in the abstract but in relation to the specific goods or services for which registration is sought, the context in which the mark is used, and the meaning likely to be understood by an average purchaser in the marketplace. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012).

The Descriptive vs. Suggestive Distinction

The critical analytical divide in Section 2(e)(1) prosecution is between marks that are merely descriptive and marks that are suggestive. A suggestive mark requires imagination, thought, or perception to reach a conclusion about the nature of the goods or services. If a consumer must exercise multi-stage reasoning to understand what a mark says about the product, the mark is suggestive—and therefore registrable without evidence of acquired distinctiveness. See In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978).

A descriptive mark, by contrast, immediately conveys information about the goods or services without requiring mental effort. ‘COLD AND CREAMY’ for ice cream, ‘SAFE RIDE’ for bicycle helmets, ‘SPEEDY MOVER’ for moving services—these marks immediately tell the consumer what the product is or does. They cannot be registered on the Principal Register without acquired distinctiveness because giving any one competitor exclusive rights to use a descriptive term would unfairly restrict the language available to others in the market.

Arguing Suggestiveness in Response to a 2(e)(1) Refusal

When an examining attorney issues a 2(e)(1) refusal, the applicant has six months to respond. The strongest response for a mark that is genuinely registrable is to argue that the mark is suggestive rather than descriptive. This argument succeeds when:

• The mark requires multiple inferential steps to connect it to the goods or services
• The mark is used in a metaphorical or figurative sense rather than a literally descriptive one
• Consumers would not immediately and directly understand what characteristic the mark describes
• Third-party registrations exist for similar marks covering similar goods, suggesting the USPTO has previously found the category registrable

In In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987), the Federal Circuit noted that a mark is descriptive if it immediately conveys knowledge of a quality, characteristic, or feature. If immediacy is absent—if a consumer must think about it—suggestiveness is the appropriate characterization.

Acquired Distinctiveness Under Section 2(f)

When a mark cannot be argued out of the descriptive category, the alternative is to claim acquired distinctiveness under Section 2(f) of the Lanham Act. Acquired distinctiveness—also called secondary meaning—exists when the consuming public has come to associate the mark with a single source, even though the mark would not otherwise be registrable.

The USPTO treats five years of continuous and substantially exclusive use in commerce as prima facie evidence of acquired distinctiveness. Applicants can also demonstrate secondary meaning through consumer survey evidence, declarations from retailers and customers, advertising expenditures, sales figures, and media coverage. The strength of the acquired distinctiveness showing must be proportional to the degree of descriptiveness.

Supplemental Register as an Alternative

When an applicant cannot overcome a 2(e)(1) refusal through argument or acquired distinctiveness evidence, registration on the Supplemental Register may be available as an interim step. The Supplemental Register is open to marks that are capable of acquiring distinctiveness over time. Supplemental registration does not carry the presumption of validity or nationwide constructive notice of Principal Register registration, but it provides some benefits—including use of the ® symbol and a basis for foreign filings—while the mark builds distinctiveness.

Contact Revision Legal

Revision Legal’s trademark attorneys regularly handle Section 2(e)(1) refusals and have successfully argued marks from the merely descriptive category into registration. If you have received a descriptiveness refusal or want to assess your mark’s registrability before filing, contact us today at 855.473.8474 or through our contact form.

Acquired Distinctiveness Evidence: What Courts and the USPTO Accept

Demonstrating acquired distinctiveness requires tangible evidence that the consuming public has come to associate the mark with a single source. The strength of the evidence must be proportional to the degree of descriptiveness—the more descriptive the mark, the stronger the evidence required. Types of evidence the USPTO regularly accepts include:

• Length and exclusivity of use: Five years of continuous, substantially exclusive use in commerce is the standard basis for a Section 2(f) claim. The exclusivity element is important—if competitors are also using the term, the mark may not have acquired distinctiveness as a source identifier.
• Sales and advertising figures: Substantial sales under the mark and significant advertising expenditures support an inference that consumers have been exposed to the mark and have come to recognize it.
• Consumer declarations: Written declarations from actual customers stating that they associate the mark with a single source can be powerful evidence. These declarations must be from consumers in the relevant market, not employees or associates.
• Consumer surveys: Market research surveys that directly measure consumer association of the mark with a single source are the most probative evidence of acquired distinctiveness. Such surveys are expensive but may be necessary for highly descriptive marks.
• Media coverage: Unsolicited press coverage that refers to the mark as identifying a specific company or product supports acquired distinctiveness.

The Competitor’s Right to Use Descriptive Terms

The policy reason behind the descriptiveness bar is straightforward: competitors have the right to use descriptive terms to describe their goods and services. Allowing any one business to monopolize a descriptive term—COLD AND CREAMY for ice cream, SPEEDY DELIVERY for courier services—would prevent competitors from accurately describing their products and would confuse consumers about the nature of what they are buying.

This principle is also expressed in the doctrine of fair use. Even if a descriptive mark achieves registration on the Principal Register with acquired distinctiveness, a competitor may use the descriptive term in its primary, descriptive sense—not as a trademark—without infringing. For example, a competitor selling a cold and creamy ice cream product can describe it as ‘cold and creamy’ even if another company has registered COLD AND CREAMY as a trademark.

Overcoming Descriptiveness Through Clever Drafting

The most effective way to avoid Section 2(e)(1) refusals is to choose inherently distinctive marks from the outset. Before committing to a brand name, work with a trademark attorney to evaluate whether the proposed mark is inherently distinctive or descriptive, and whether it can be modified to achieve inherent distinctiveness without losing its marketing value.

In many cases, minor modifications can move a mark from the descriptive to the suggestive category. A mark that directly describes a characteristic—QUICK CLEAN for cleaning services—can be reframed through more imaginative wording that suggests the characteristic without stating it directly. The marketing insight and the legal insight often align: distinctive brand names are not only more registrable, they are also more memorable and harder for competitors to imitate.

Contact Revision Legal at 855.473.8474 if you are building a brand and want to assess the trademark strength of your proposed marks before committing to them, or if you have received a 2(e)(1) refusal and need help developing a response strategy.