What is a Descriptive Trademark?

January 11th, 2012

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, an attorney with Traverse Legal, PLC, a law firm that represents trademark applicants, trademark registrants, and those facing trademark issues throughout the United States.

Today, I will be answering the question:  “What is a descriptive trademark?”

A descriptive trademark is a word that identifies the characteristics of the product or service to which the mark pertains.  It is similar to an adjective.  An example would be “deep bowl”.  If that’s the mark you used to describe a spoon with a deep bowl for scooping, it is what’s known as a descriptive trademark.  And, it’s important to identify what your mark is and the strength of that mark because descriptive trademarks, those that are merely descriptive, are not entitled to trademark protection and all the benefits that go along with it.  In particular, they wouldn’t be entitled to registration on the principal register of the United States Patent and Trademark Office.  Instead, they’d be relegated to the supplemental register, which does not carry with it the ability for you to claim exclusive rights to use that mark in connection with your goods and services recover attorney’s fees and statutory damages in the event of a federal court lawsuit and other benefits and presumptions that go along with ownership of a distinctive mark.

However, it is important recognize that just because you started out using a descriptive trademark or it was initially determined to be a descriptive trademark, it does not ultimately preclude you from gaining those exclusive rights that go along with a distinctive mark. In order to do so, you accomplish something more than a descriptive trademark by acquiring what’s known as an acquired distinctiveness.  Acquired distinctiveness is when the consuming public begins to recognize your mark as the source of your particular goods or services, as opposed to the term or adjective describing exactly what it is your goods or services are.

So, again, to differentiate, a merely descriptive trademark is not entitled to protection.  However, a mark that has acquired distinctiveness through extensive use over a long period of time, extensive advertising or monetary expenditures on marketing or other continuous use of the mark, could allow it to become what’s known as an acquired distinctiveness mark and entitle it to the protections that go along with all other distinctive marks such as suggestive, arbitrary or fanciful marks.

So, when you’re deciding what mark to use for your particular goods or services, it is a balancing act because, on the one hand, you want to have a mark that in some way, shape or form gives the consuming public an idea of what you’re selling.  On the other hand, it does have implications from a trademark perspective.  That being said, remembering that you can acquire distinctiveness in a descriptive mark gives you that ability to have protections, even if the mark at first glance or initially was merely descriptive.  But, either way, you would be well served by speaking with a trademark attorney that can advise you over these differences between the strength levels of a mark and, also, give you an idea of how that affects what a trademark application may ultimately be relegated to in the USPTO.  Namely, whether it’s on the principal register with all the super benefits that go along with that or on the supplemental register.

So, once again, this has been Brian Hall answering your question:  “What is a descriptive trademark?

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

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2 Responses to “What is a Descriptive Trademark?”

  1. A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. Small companies and startup businesses often fall into the trap of wanting to create a brand which tells consumers what they do for a living. They want to pick a domain name which describes their products and services. What a descriptive trademark is one which not only likely make sense to you but to other competitors in your industry. Chances are, other businesses have chosen the same or similar descriptive mark name for their goods and services.

    It is certainly true that no one knows who you are when you 1st start out as a small start up business. When you want to pick a brand and trademark which comes to mean something special and only designates you in the market. Resist your temptation to choose a descriptive word or phrase for your trademark or even a descriptive domain name. Instead, come up with a unique word or phrase which will provide for strong trademark protection and can only mean your company, good or service in the market. If your products and services are good, people will quickly come to know you as your brand and went consumers say your brand name, everyone will know they are talking about you.

    Inexperienced trademark registration attorney can help you pick a name for your company, good or service which has the potential to achieve strong trademark rights from early in your business model. Retaining a trademark lawyer while you are trying to think of good trademark names will help you understand which names are potentially strong trademarks and which names are potentially weak trademarks. Any good trademark registration attorney will encourage you to avoid descriptive trademarks and pick something more creative and arbitrary. While a descriptive trademark sounds like a good idea, it really won’t be over the long term.

  2. Descriptive trademarks are the most common marks which new companies and startup companies seem to gravitate towards. It seems that new businesses really like their company name to describe what they do. The thinking is that if they pick a descriptive word for their company name they will get more business. After all, if your company name doesn’t describe what you do, a consumer may keep going to the next listing.

    Trademark law attorneys who help companies with branding issues almost always push their client to consider a suggestive, arbitrary or fanciful trademark for their name. These are the stronger trademarks and much easier to protect from infringement.

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