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Trademarks: When a company name is considered merely descriptive

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods or services of one seller or provider from those of others, and to indicate the source of the goods or services.  Many business owners attempt to register their business name as a trademark for fear that another business may try to use the name. Although it is a good idea to protect your company name, not all names are eligible for trademark registration. If the business is in its early stage, this is something to consider when choosing a business name.  If, however, the business has been operating for some time, there may not many options available if registration is denied by the United States Patent and Trademark Office (“USPTO”).

Marks are registered on the Federal Trademark Register, which is comprised of both the Principal Register and the Supplemental Register. Marks registered on the Principal Register are provided the strongest protection. The owner of a mark on the Principal Register has a presumption of validity, ownership of that mark in all 50 states, and exclusive rights to use the mark. If the business is involved in a lawsuit concerning the use of mark, the mark is presumed to be valid and the business is presumed to be the owner of the mark.  It is the other party’s burden to prove the mark is not valid or the business is not the owner. In contrast, there is no presumption afforded to marks on the Supplemental Register. Despite this fact, there are still benefits to registering a mark on the Supplemental Register.  Particularly, a registration on the Supplemental Register grants the mark owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods or services.  Also, applications for registration on the Supplemental Register are not published for third party opposition. The owner of a mark on the Supplemental Register can still sue for infringement, but the owner will not have all the protections afforded to an owner of a mark filed on the Principal Register, most notably, presumptions of validity, ownership and exclusive rights to use the mark.

The factors that ultimately determine what register the trademark will ultimately end up on are the mark’s degree of descriptiveness or distinctiveness.  While it may seem appropriate for marketing purposes to pick a business name that best describes the goods or services that the business will sell, marks that merely describe the goods or services in connection with which the mark will be used are not registrable on the Principal Register.

The degree of descriptiveness or distinctiveness of a mark is measured on a sliding scale. At the top of the scale are marks that are fanciful or arbitrary. These marks are considered inherently distinctive and do not require a showing of secondary meaning to be registered.  Following fanciful and arbitrary marks are suggestive marks which require some degree of imagination or thought in order to reach a conclusion as to the nature of the goods or services. Suggestive marks, like fanciful and arbitrary marks, are registrable without a showing of any secondary meaning. After suggestive marks are merely descriptive marks, which may be refused registration on the Principal Register.  Finally, at the bottom of the scale are generic terms which are typically the common or class name for the goods or services. Generic terms are never considered registrable. 

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. The determination of whether or not a mark is merely descriptive is made by the USPTO on a case by case basis and requires consideration of the context in which the mark is used, or intended to be used, and the possible significance the mark would have to average purchaser in the marketplace.

Marks that are merely descriptive of goods and services may not be registered on the principal register absent a showing of acquired distinctiveness or secondary meaning.  There are three (3) basic types of evidence that may be used to establish acquired distinctiveness. These include, (1) a claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application; (2) a statement verified by the applicant that the mark has become distinctive of the applicant’s goods and services by reason of substantially exclusive and continuous use in commerce by the applicant for the five (5) years before the date when the claim of distinctiveness is made; and (3) actual evidence of acquired distinctiveness.

An applicant may submit one or any combination of the above types of evidence. The burden to prove acquired distinctiveness is on the applicant. Generally the more descriptive the mark of the goods and services, the more evidence is required to make it believable that a purchaser would identify that mark with the applicant’s goods or service.

A claim of ownership of a prior registration on the Principal Register is the best evidence to establish acquired distinctiveness or secondary meaning. This evidence  is not always available to businesses, particularly new businesses.  Proof of substantially exclusive and continuous use by an applicant as a mark in commerce for five (5) years before the date on which the claim of distinctiveness is made may be accepted as evidence of acquired distinctiveness. The five (5) years’ use can be substantially exclusive, meaning there can be some inconsequential use by others, however, the use of the mark during the five years must be continuous; there can be no period of nonuse by the applicant.   An applicant’s statement of five year’s use must be submitted in affidavit or declaration form. Whether a claim of five (5) years’ use will be deemed acceptable evidence of secondary meaning is based upon the nature of the mark in relation to the specified goods or services. When the mark is considered highly descriptive, a statement of five (5) years’ use will not be considered sufficient to establish acquired distinctiveness.

Actual evidence of acquired distinctiveness is the most difficult and time-consuming evidence to gather. In support of registrability, an applicant may submit affidavits, declarations, depositions or other appropriate evidence showing the duration, extent and nature of the applicant's use of a mark in commerce, advertising expenditures in connection with such use, letters or statements from the trade and/or public, survey evidence, market research and consumer reaction studies, or other appropriate evidence tending to show that the mark distinguishes the applicant’s goods or services. The true test is whether secondary meaning of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public. Evidence showing this can be difficult to gather.

An applicant’s registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. While registration on the Principal Register is preferred, when an applicant’s mark has been denied registration on the Principal Register due to being merely descriptive and the applicant is unable to prove the mark has acquired distinctiveness, the applicant may wish to seek registration on the Supplemental Register in an effort to take advantage of the protections available therein.

 

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