Descriptive Trademarks and Service Marks & Their Potential Legal Protection
Descriptive marks are those trademarks or service marks that only describe the products or services to which they are applied. Marks that are merely descriptive generally are not protected or accorded trademark rights. This is because they do not identify and distinguish the source of products or services. Marks that are mis-descriptive are also not protected.
Descriptive marks can be confused with suggestive marks, which do receive moderately strong protection. The difference is that suggestive marks require imagination, thought, or perception to determine the nature or quality of the goods, whereas descriptive marks allow someone to draw those conclusions without putting any effort into it. For example, “Tubeless” for a computer monitor is mis-descriptive. Similarly, 104 Key is merely descriptive of keyboards, since it describes the number of keys on a keyboard. “Suntan Oil” is merely descriptive, whereas, “Coppertone” is suggestive of the outcome of using the product.
Descriptive marks can become distinctive only if they achieve secondary meaning. This means that, although the mark seems descriptive on its face, consumers recognize the mark as a designation of a particular source.
Many business owners want to use their surnames for their business. If you are considering using your surname, you should be aware that surnames are treated like descriptive marks. In other words, they will not be protected as trademarks if they are primarily used as surnames until they achieve secondary meaning. A trademark application for a surname is not automatically denied because it is a surname, however. Extremely rare or obscure surnames will not necessarily need proof of a secondary meaning. Also, a mark that is partly a surname and partly fanciful, arbitrary, or suggestive sometimes may be registered even if the surname portion cannot be registered independently.
Once a secondary meaning is achieved in a surname-based mark, the mark can be protected as a trademark, and others will not be able to use the mark on similar goods even when they have the same name. For example, if your last name is “McDonald,” you could not open a restaurant under this surname because McDonald’s has acquired a secondary meaning.
How to Prove Secondary Meaning
Varying amounts and types of evidence may be needed to prove that consumers think of the term in association with a single source of a product. The less descriptive a particular term is, the less evidence you will need. Generally, there are three types of evidence used to show secondary meaning: a claim of ownership of one or more previous federal registrations for substantially the same mark for similar products or services, five years of substantially exclusive and continuous use, and actual evidence.
If your prior registration is for a design mark with words, and the new application is for words only, it may be enough to show ownership of one or more previous federal registrations of a descriptive mark. Producing evidence of substantially exclusive use works better for marks that are either surnames or not highly descriptive. When marks are highly descriptive, you will need to show actual evidence of secondary meaning. This can take the form of consumer surveys, consumer testimony, proof of exclusive use, the length of time the mark was used and how it was used, the amount of customers, an established position in the market, or proof of intentional copying.
Once you can show that your descriptive mark has achieved a secondary meaning, you have developed a protectable trademark. You can achieve secondary meaning through long-term use or substantial amounts of advertising and publicity designed to get the public to associate your product with the descriptive term or word.
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