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Merely Descriptive Office Actions Under Section 2(e)(1)

By Eric Misterovich

Trademark applicants often receive office actions denying their applications for trademark registration under Section 2(e)(1) of the Lanham Act.

Under this section, an application for trademark registration can be denied on the basis that the mark “when used on or in connection with the goods of the applicant is merely descriptive… of them.”

Merely descriptive refusals can be overcome by good lawyering prior to the filing of the trademark application, but they can also, in some circumstances, be overcome by submitting arguments in response to the examining attorney’s office action that the mark is suggestive and not descriptive.

A mark is merely descriptive, and therefore prohibited from registration by Section 2(e)(1), if it immediately coveys knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used. See In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987). “Whether a particular mark is merely descriptive must be determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the possible significance that the mark is likely to have to the average purchaser encountering the goods or services in the marketplace.” See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012). A descriptive mark can be registered with the USPTO if it has acquired distinctiveness, which typically occurs after it has been used in commerce for a period of 5 years or more.

A mark is suggestive, and therefore registerable, without evidence of acquired distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services.

“[I]f one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978).

Consequently, an applicant can overcome a merely descriptive refusal under Section 2(e)(1) by making well formed arguments that a multi-stage reasoning process is needed to associate the mark with the goods or services sold under the mark.

If an applicant cannot overcome a merely descriptive refusal, the applicant can typically petition for registration on the Supplemental Register. The Supplemental Register is open to marks that are capable of acquiring distinctiveness but have not yet done so. After the mark has achieved distinctiveness, the applicant can reapply for registration on the Principal Register (typically after five years).

If you are faced with a merely descriptive refusal, contact our trademark attorneys today at 855.473.8474.

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