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.


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.

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