A Concise Guide to the Lowly Descriptive Trademark
It happens rarely, but there are some areas in which lawyers provide legal advice that is systematically ignored by a large segment of clients. For many decades, trademark lawyers have advised clients not to use “descriptive terms” as trademarks because they are “weak.” And yet clients – or at least some clients – love these terms and continue to insist on using them.
The Trademark Hierarchy:
Trademarks are classified into four categories of “distinctiveness:” (1) Fanciful/Made-up terms, arbitrary terms, suggestive terms, and descriptive terms such as Exxon for gasoline or “Xerox” for copy machines. (2) Arbitrary terms such as “Apple” for computers or cell phones or “Shell” for gasoline. (3) A suggestive term is a mark such as “Airbus” for airplanes or “Microsoft” for computer software. Then there’s (4) descriptive marks – which are considered “weak” because they describe the good or service itself and therefore are are not distinctive. A mark such as “Pedal and Ride” for bicycles, “Superior Garage Doors” for garage doors, “Brooklyn Pizza” for pizza, or “Collagen Lip Balm” for lip palm are considered “descriptive.” A mark such as “Tuna Fish” could not serve as a trademark for tuna because that term is considered “generic.”
Distinctiveness is a measure of the trademark term’s inherent strength. A mark that is highly distinctive has greater inherent strength. For example, the term “Carrot Weather” for a weather forecasting service is more distinctive than “The Weather Channel.” Therefore, “Carrot Weather” is an inherently stronger trademark term than the “Weather Channel.” The “Carrot” in “Carrot Weather” is an arbitrary term – almost at the top of the trademark distinctiveness heap. Whereas “Weather Channel” simply describes what weather the Weather Channel is. However, as we will see, an indistinct mark such as Weather Channel can obtain distinction over time continuous and systematic use and vigorous branding.
The Inherently Articulate Mark:
The result of this is that trademark lawyers often advise clients to “avoid descriptive marks” because they are difficult to register, often attract litigation, and are inherently “weak.” They counsel clients away from terms like “Kansas City Cleaning Service.” Or products names like “Bolt Turner” for wrenches. And yet, many smart and reasonable businesspersons covet such marks. Why is there such a disconnect on this issue?
The answer is that, from a business perspective, marks that are at least somewhat descriptive are inherently articulate about the product or service offered and thus provide advantages in certain product or service categories that arbitrary or fanciful marks struggle to match. For example, a term such as Paola Barbecue for a barbecue is decidedly descriptive. The name tells what the restaurant serves and where it is. Some trademark lawyers may scoff at such a name. But a business owner who simply wants to become known as “the” barbecue joint in Paola, KS may love that name and will press a press her lawyer to find ways to obtain and hold exclusivity after their restaurant launch? Why? Because this descriptive term does some of the work of identifying for the customer type of business and its location – two critical issues for a restaurant. Although other possible terms such as “Good Wood” or “Rub” might be clever – they require much more from a hungry consumer looking for a place to eat in southeastern Kansas. The descriptive mark may be inherently weak on distinctiveness, but it is strong in articulating the associated product or service.
Embracing the Descriptive Mark:
Although traditional trademark lawyers are correct that Descriptive Marks are inherently weak on distinctiveness, they can acquire distinctiveness through use and gain a secondary meaning in the marketplace. A fanciful or arbitrary mark is unlikely to say anything to the customer about the product or service offered and that link in the customer psyche must also be acquired. In other words, either way, the client is going to have to position its mark to acquire either distinctiveness of a connection to the goods or services on offer. It is not irrational at all for a client to prefer a mark that describes its product or service.
Although descriptive marks have some issues, they are not insurmountable. There are strategies available to an owner of a descriptive mark that can increase the chances of obtaining exclusive rights to that mark. Specifically, an owner of a descriptive mark should:
- Assess whether there are other, similar descriptive uses that are fairly similar and evaluate the chances of developing exclusive rights to the specific descriptive mark under consideration;
- Devise a branding strategy in which the descriptive mark is used in an extremely consistent manner and as broadly as possible;
- Consider coupling the descriptive mark with a unique design logo. This way, the client can obtain distinctiveness through the logo and descriptiveness through the word mark (the opposite is also true – the design could describe the product).
- Register the descriptive mark on the Supplemental Register of the U.S. Trademark Office. Descriptive marks can be registered on the Supplemental Register and provide some of the rights of “full” trademark registration on the Principal Register. The main “missing right” is a recognition of distinctiveness. But after five years on the Supplemental Register, a mark may be re-registered on the Principal Register because it will be deemed to have acquired a “secondary meaning” in the marketplace;
- If you have a business that uses a descriptive mark, and you have had it in use for five years or more – be alert! Your Applied-For mark may qualify for the Principal Register pursuant to Section 2(f) of the Trademark Act.
- Once your mark is on the Principal Register, even though your mark is arguably “inherently” weak, it will have acquired a presumption of “secondary meaning,” validity, ownership, and exclusivity.
- Furthermore, once you have the mark in use for five years, other marks you own may qualify for the Principal Register through the application of “2(f) in part.” So, for example, if you have a registration for Paola Barbecue Restaurant in use for five years and register that on the Principal register, you may also be able to register Paola Barbecue Sauce under 2(f) in part on the Principal Register.
Roll Up Your Sleeves:
It’s understandable that trademark attorneys counsel against descriptive marks. But, depending on the client’s business needs, marketing strategy, and business philosophy, a descriptive mark may be a very rational choice. It is not the trademark attorney’s role to look askance at a descriptive mark. The trademark attorney can explain the advantages and disadvantages but after considering the relevant factors, if the client decides to go the descriptive route, the client should encourage the trademark attorney to roll up his or her sleeves and deploy the many strategies that will enhance the client’s position.
At Kennyhertz Perry, we provide you with legal advice that is designed to complement your business goals. We understand that every business is different and respect your insights into your own business. We want to help you increase the value of your brand assets.
By Arthur Chaykin, Kennyhertz Perry, LLC
Arthur Chaykin is head of Kennyhertz Perry’s Intellectual Property practice. He was formerly a Vice-President of Law at the Sprint Corporation where he served as, in succession, their chief litigator, the head of the business law department, and Vice President of the first legal department at Sprint supporting marketing and sales in all areas of Sprint’s business: international, wireless, wireline, local and long-distance services. At Sprint, he also served as the head lawyer for Sprint Ethics and Compliance program. He has since served as General Counsel to a major manufacturer and distributor of automotive lifting equipment and automotive accessories and has represented numerous clients on trademark matters, copyright cases, trade secrets disputes, food safety regulatory issues, and consumer product safety issues. has over 35 years of legal experience handling trademark, patent, copyright, and trade secret litigation and arbitration.
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