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OVERCOMING A MERELY DESCRIPTIVE REFUSAL
3 DIY Strategies For Overcoming Merely Descriptive Refusals
A mark does not have to be totally lacking in meaning (completely non-descriptive) to be registrable, the USPTO trademark examiner may require an applicant to disclaim exclusive rights to part of the mark that is unregistrable rather than refuse the entire mark. See 15 U.S.C. §1056(a) Disclaimer of unregisterable matter.
1. Refusals can be overcome by arguing that the trademarks are suggestive, arbitrary, fanciful rather than descriptive or merely descriptive.
2. Refusals (sometimes called rejections) can be overcome by arguing that the trademark or service mark falls into one of the many exceptions to the rules rather than merely descriptive.
3. Overcoming a merely descriptive refusal is also possible when it can be effectively argued that the mark has acquired distinctiveness sufficient to move it to the left (blue arrow) in the diagram below. Facts matter– what would constitute an effective argument is subjective to the facts. See acquired distinctiveness examples below the chart.
Acquired Distinctiveness Examples (or Secondary Meaning)
- Weapons manufacturer's “SCAR” mark, which was merely descriptive of a type of firearm, acquired distinctiveness through secondary meaning in firearms industry prior to firearms retailer's first use of its “SCAR-Stock” mark, as required for trademark protection under Lanham Act, where manufacturer used its mark in commerce for a little less than two years before retailer introduced its mark, it won a multi-year contract with United States Special Forces Command (SOCOM) to provide combat assault rifles bearing “SCAR” mark, U.S. Military was a prominent and influential actor in firearms industry, media outlets extensively covered manufacturer's development of its “SCAR” rifles for SOCOM, and manufacturer received public inquiries as to when its “SCAR” semi-automatic rifle would be available for civilian purchase. Lanham Trade-Mark Act § 4, FN Herstal, S.A. v. Clyde Armory, Inc., 123 F. Supp. 3d 1356 (M.D. Ga. 2015), aff'd sub nom. FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071 (11th Cir. 2016).
- Claim of acquired distinctiveness for BEST JEWELRY & Design for retail jewelry store services accepted based on prior registration for BEST & Design for mail order and catalog showroom services, descriptiveness refusal withdrawn; likelihood of confusion refusal reversed due to differences in marks and differences in applicant's services and cited registrant's goods) In re Best Products Co., Inc., 231 USPQ 988, 989 n. 6 (TTAB 1986)
- Descriptiveness refusal reversed because “any distinctiveness that applicant's mark ‘LIBBEY’ might possess as applied to cut-glass articles [in prior registration] would more than likely carry over to its plastic tableware”. In re Owens-Illinois Glass Company, 143 USPQ 431, 432 (TTAB 1964).
- In a rare “color mark” decision, the Board reversed a refusal to register a mark comprising the color “white” for “preformed gunpowder charges for muzzleloading firearms,” finding that Applicant Hodgdon Powder had proven acquired distinctiveness under Section 2(f). John L. Welch, Part I. Ex Parte Cases, 108 Trademark Rep. 8, 43 (2018). (In re Hodgdon Powder Co., 119 U.S.P.Q.2d 1254 (T.T.A.B. 2016).)
- [HM Electronics, Inc.]'s evidence establishes that its mark has acquired distinctiveness. Applicant has had sizable income ($35 million) from sales of headsets incorporating its mark in five years, its revenues are high in comparison to revenues for headsets sold by third-parties, and Applicant's sales of headsets including the mark are in excess of 60 percent of the total headsets sold in the QSR industry. Further, Applicant has had $1.25 million in advertising and promoting the mark and associated goods, which in the QSR industry, Mr. Haas also characterizes as “high.” Further, Applicant has engaged in “look for” advertising in print advertising, bill stuffers, electronically delivered advertising and pages from Applicant's website, which points consumers to the configuration of Applicant's mark; certain advertisements state, “Look for the unique earpiece design.
- [T]here is only minimal evidence of third-party uses of the words “mental management,” and from the third-party uses of record, it is clear that the words “mental management” may refer to various things related to the mind, including mental stress, mental control or mental problems, etc. Moreover, applicant has established over twenty years of use of his mark for his identified services, and he submitted seven individualized letters from people who have purchased and utilized his services, all of them attesting to, inter alia, their recognition of applicant's mark, MENTAL MANAGEMENT, as referring specifically and only to applicant, Lanny Bassham. One of the seven customers had first attended one of applicant's seminars in 1977. In view of the nature of this mark, we find applicant's evidence demonstrates, at least prima facie, that these words have become distinctive of applicant's services. In Re Lanny Bassham, DBA Mental Mgmt. Sys., 75/606,101, 2001 WL 245709, at *3 (Feb. 20, 2001).
- Light bulb supplier's descriptive mark “Just Bulbs” had acquired a secondary meaning in the minds of the consuming public, and was thus protectable under trademark law, where supplier had used mark continuously for at least 34 years, supplier's annual sales were greater than those of alleged infringer, and supplier had extensive sales, advertisements, and media coverage. [ ] The following factors are relevant to a trademark's secondary meaning, for purpose of determining whether a descriptive mark is protectable: (1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant's intent in copying the trademark. Bulbs 4 E. Side, Inc. v. Ricks, 199 F. Supp. 3d 1151 (S.D. Tex. 2016).
- Even if “SELECT AUTO IMPORTS” mark used in connection with used automobile sales business was not suggestive, as determined by the United States Patent and Trademark Office (USPTO), it acquired secondary meaning and was thus commercially strong so as to create a likelihood of confusion when such terms as “select” and “auto” were used by other car dealerships, as required to support owner's trademark infringement claim against competitor who used “YATES SELECT AUTO SALES” mark; owner of “SELECT AUTO IMPORTS” used the mark for nearly three decades, spent millions on advertising with the mark, and enjoyed commercial success with the mark. [ ] Secondary meaning, and thereby commercial strength of a mark, as required for protection from infringement under the Lanham Act, can be shown through, among other things, length and exclusivity of the mark's use, advertising expenditures, and sales success. Lanham Trade-Mark Act § 32, 15 U.S.C.A. § 1114. Select Auto Imports Inc. v. Yates Select Auto Sales, LLC, 195 F. Supp. 3d 818 (E.D. Va. 2016).
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How can you Avoid Descriptive Trademarks?
Verify Trademark Strength
Two factors affect the overall strength of a trademark: its inherent strength based on the nature of the mark itself (its inherent potential) and its commercial strength, based on the marketplace recognition value of the mark (how much strength is acquired). See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011).
Nature of the mark itself: “The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).
Nonuse by others: “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).
Weak marks are generally descriptive or suggestive or common words where the use of the mark (acquired commercial strength) has not or does not overcome the mark's intrinsic or inherent shortcomings. Weak marks are often accorded a narrower scope of protection.
Ordinary strength marks that are neither weak nor exceptionally strong are entitled to the same scope of protection as other registered marks of the same character, not to the broader protection which an exceptionally strong or famous mark would merit.
Strong marks or famous marks are given broader protection. Fame would play a dominant role in the likelihood-of-confusion analysis because famous marks enjoy a broad scope of protection. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
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