Tuesday, 08 November 2011

What is a Descriptive Trademark?

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

My name is Brian Hall, and I’m a trademark attorney with Traverse Legal, PLC, a law firm specializing in the representation of trademark owners throughout the world.  Today, we will be answering the question:  What is a descriptive trademark?  As some people know, trademarks can be classified in a whole spectrum of trademark distinctiveness categories.  A trademark can be deemed, fanciful or arbitrary, suggestive, descriptive or, in some cases, generic, meaning it has no rights as a trademark. 

Today, we will be figuring out how do you determine whether or not something is descriptive trademark?  It is important to understand that if a mark merely describes the goods or services used in connection with that mark, it is going to be deemed a descriptive trademark.    Descriptive trademarks are not entitled to trademark protection.  They are deemed merely descriptive, as opposed to distinctive.

 

Some examples of descriptive trademark s include:  If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive.  Similarly, an optics store known as Vision Center would also be deemed merely descriptive and not entitled to exclusive trademark protection.  However, just because a mark is deemed descriptive, does not mean that it is entirely void of any protection in the future.  In fact, many descriptive trademarks have been eventually found to warrant trademark protection.  And this can be done in a couple ways. 

The first is to show that the mark has acquired distinctiveness, meaning that through use over a certain amount of time the consuming public has come to realize that the mark identifies the source of those goods or services rather than merely describes the goods or services used in connection with that mark.  The second way is through what’s known as secondary meaning.  And secondary meaning can be achieved through extension efforts to advertise, market and otherwise publish information about that mark.  So, those two ways are ways in which someone can start with what’s known as descriptive trademark but eventually have it be recognized as a distinctive trademark entitled to trademark protection. 

Now, just because a mark is deemed descriptive by someone, doesn’t necessarily mean that it is void of any protection, and it usually requires a specialized and trained trademark attorney to make that determination.  Furthermore, when someone goes to register a trademark with the United States Patent and Trademark Office, for example, an examining attorney will make a determination as to whether or not a mark is indeed descriptive, and thus, not entitled to exclusive protection on what’s known as the Principal Register of the USPTO.  However, once again, just because it’s deemed descriptive initially by the examining attorney, does not preclude the applicant from establishing that the mark has indeed acquired distinctiveness so as to warrant exclusive protection. 

Now, one area that many layperson as well as trademark attorneys alike get caught up on is the slight distinction between a descriptive trademark and a suggestive trademark.  While a descriptive trademark is not entitled to exclusive protection absent the acquired distinctiveness we talked about, a suggestive is.  Oftentimes, the line between those two designations is very, very fine.  If you are looking to identify your good or service by a mark and want to avoid a descriptive trademark, you’d be well-served speaking with a trademark attorney that can assist you in navigating that fine line between a descriptive and a suggestive trademark. 

This has been Brian Hall from Traverse Legal, PLC walking you through descriptive trademarks and answering your question as to 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.

COMMENTS

The difference between a descriptive and generic trademark or service mark is also very grey sometimes. It is critical that a company does not pick a mark that is so descriptive that a court might think it is generic, or provide an easy defense to a claim of trademark infringement by your lawyer in a threat letter.

Everyone wants to chose a brand or product name that tells consumers what the product is or does. While that short term goal is predictable, a good trademark lawyer will tell you to pick a suggestive trademark or arbitrary trademark that could only mean you. Think Nike, Google, Facebook, Twitter.... Strong trademarks that do not describe the service or product offering. Easy to defend against infringement.

The comments to this entry are closed.

TrackBack

TrackBack URL for this entry:
http://www.typepad.com/services/trackback/6a00d834208fd253ef0162fc3a3689970d

Listed below are links to weblogs that reference What is a Descriptive Trademark?:

Official Trademark Clearinghouse Agent

Trademark Blog Homepage: Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
  • How to handle a trademark cease and desist letter?
    Trademark Attorney Brian Hall discusses what you should do when you receive a trademark cease and desist letter. What a trademark threat letter? Why trademark owners send trademark threat letters? What you should do when you receive a trademark infringement threat letter.

How to Trademark A Name?

  • How to Register a Trademark - USPTO Stopfakes.gov
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO Stopfakes.gov
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO Stopfakes.gov
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.

ARCHIVES

Domain attorney recommended by Domaining.com
© 2011 Traverse Legal, PLC. All Rights Reserved.
Traverse Legal on LinkedInTraverse Legal on FacebookTraverse Legal on Twitter
Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan