Is your trademark “merely descriptive” of your goods and services?

One of the more difficult office action rejections to respond to when filing for a trademark registration at the United States Patent and Trademark Office is that of a trademark that is merely descriptive of the goods/services that the trademark represents. Descriptive trademarks made not be registered to the Principal Register at the USPTO.

While this blog has a prior discussion on the need to have a stronger trademark, not every company will create or find a mark that is fanciful.  (Fanciful marks – words created for the trademark use alone – are the strongest marks, inherently distinctive trademarks, and eligible to be on the Principal Register. And if the USPTO claims that your trademark is merely descriptive, it is up to you, the applicant, to argue in response that your mark is at least suggestive of the goods/services or the qualities of the goods/services that you applied for.   “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.  Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.” T.M.E.P. § 1209.01(a). Suggestive marks are registrable on the Principal Register without proof of secondary meaning. Id. (For a further discussion on secondary meaning, please see another previous post.) Arbitrary marks – strong trademarks whose words do not relate to the goods or services offered – are also inherently descriptive and may be registered on the Principal Register.

Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the services of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). For a term to be merely descriptive within the meaning of § 2(e)(1), it is not necessary that the term describe each feature of the services, only that it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).  The merely descriptive refusal to register at the USPTO is a common reason in an Office Action from the USPTO.

Determining the descriptiveness of a mark under § 2(e)(1) of the Trademark Act is done in relation to an applicant’s goods or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re Chamber of Commerce, 102 USPQ2d at 1219 (citing In re Bayer, 82 USPQ2d at 1831). In other words, the question is not whether someone presented only with the mark could guess the services listed in the identification. Rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).

For example, when two or more merely descriptive terms are combined, the determination of whether the combined mark also has a merely descriptive significance turns on whether the combination of terms evokes a non-descriptive commercial impression. In re Oppedahl & Larson, 71 USPQ2d at 1372 (quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)). However, in considering the mark as a whole, the USPTO may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. In re Oppedahl & Larson, 71 USPQ2d at 1372 (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). Thus, the USPTO may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS v. Inviro, 103 USPQ2d at 1757 (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”).

Giving a specific example, back in 2014 Experian Health, Inc. filed TOUCHLESS PROCESSING to represents goods/services of “Providing temporary use of on-line non-downloadable software for use in automating the electronic processing of patient information in the field of healthcare.”  The USPTO, in an office action, rejected this application, stating that the trademark of TOUCHLESS PROCESSING is merely descriptive, since nobody would touch screens or devices in automated electronic processing.

In this particular example, the applicant uses the word “touchless” so that consumers can deduce, through thought, that the applicant’s services automate much of the revenue cycle workflow, not to describe the literal hands­-free use of a computer keyboard or touchscreen. 

Such hands-free use would have no application in this situation and would not be a desirable characteristic to most potential consumers. The applicant’s services, instead, filter certain accounts in the revenue cycle workflow, allowing users to focus on those accounts that need the most attention. For instance, the applicant’s services help to identify patients who need follow-up, prioritize and distribute work among staff, and connect the business office with front-end processes. While the Applicant services improve staff efficiency, ease certain patient processing tasks, and assist with organization, users must still physically touch the keyboard, input, and process much of the patient information. In summary, the applicant’s services are not literally “touchless,” and consumers would not request Applicant’s services in order to avoid “touch[ing] a keypad, screen, etc.” While “touchless”  means hands-free use of “a keypad, screen, etc.,” and this definition may remind some people of the automation provided by applicant’s services, it would take a leap of the imagination to make this connection.

In this case, the descriptiveness rejection was removed and the mark was deemed to be, at least, a suggestive term, and TOUCHLESS PROCESSING was registered.

That is the key in the fine line of a trademark that is merely descriptive or a suggestive term:  Showing that the trademark does not actually describe the goods/services involved.

Overcoming a Merely Descriptive Refusal

Overcoming a 2(e)(1) refusal, where a mark is deemed merely descriptive of the goods or services, can be challenging. The Trademark Trial and Appeal Board (TTAB) upholds these refusals 90% of the time, and in recent years, this rate has been as high as 93%. Each case is fact-specific, but certain arguments tend to be more effective in overcoming these refusals.

Effective Arguments

1. Double Entendre: A mark that has a double meaning can avoid refusal if one of the meanings is not merely descriptive. For example, in In re Kraft, Inc., 218 USPQ 571 (TTAB 1983), “LIGHT N’ LIVELY” for reduced-calorie mayonnaise was not refused because “LIGHT” lost its descriptive meaning when used as part of the phrase.
2. Incongruity: Combining two or more terms to create incongruity can make a mark unitary, avoiding the need for a disclaimer. For example, in In re Dunham, Serial No. 86941745 (April 6, 2018), “BRAND THERAPY” for graphic design consulting created an incongruity because brands don’t typically undergo therapy. This required imagination to see the descriptive quality, making the mark suggestive.
3. Intentional Misspelling: Misspelling a descriptive word does not automatically overcome a refusal unless the misspelling creates a secondary meaning. For instance, in In re Choice Traders LLC, Serial Nos. 87770413 and 87950215 (March 31, 2020), “ARTIZEN” for essential oils suggested a play on “artisan” and “zen,” creating a different commercial impression and overcoming the descriptive refusal.

Proving Suggestiveness

A mark can also overcome a refusal by proving it is suggestive rather than descriptive. Suggestive marks require imagination, thought, or perception to reach a conclusion about the goods or services. For example, “THE LONG ONE” for a loaf of bread was deemed suggestive because it didn’t describe the bread with particularity (In re Gourmet Bakers, 173 U.S.P.Q. 565 (TTAB 1972)).

Evidence of Industry Use

If the mark is not commonly used in the industry as a descriptive reference, this can support an argument for suggestiveness. The TTAB found “THE LONG ONE” suggestive partly because it wasn’t a common term among bakery companies.

Successful Examples

Here are examples of successful office action responses:

1. BRUFFIN: Argued to be suggestive because the term is ambiguous and not commonly understood, requiring imagination to link it to a line of high-end pastry products.
2. KNOWLEDGEMANAGER: The combination was argued to be incongruous for predictive modeling services, suggesting aspirational qualities not immediately conveying descriptive information.

Double Entendre Examples

1. MUFFUNS: Held to be suggestive for mini muffins due to its playful and inventive spelling, which suggested cuteness and festivity.
2. YOUR HOME IN THE CLOUD: Argued to be a double entendre for cloud services related to real estate, with both meanings apparent from the mark itself.

Conclusion

While overcoming a 2(e)(1) refusal is challenging, well-informed arguments can be successful. If a mark is truly descriptive, proving acquired distinctiveness may be the only way to achieve federal trademark protection on the Principal Register. For more information, consult the Trademark Manual Examining Procedure (TMEP) guide under §1212 or consider amending the application to the Supplemental Register.

The Supplemental Register

What is the Supplemental Register?  The Supplemental Register is the roll call of descriptive marks that are registered at the USPTO and the trademark applicant can choose to file a merely descriptive mark on the Supplemental Register.  While marks on the Supplemental Register do not have the same set of exclusive rights as those on the Principal Register do, it is a registration at the USPTO and it does describe the goods or services the mark represents.  The trademark owner will be able to use the registration symbol after the mark to show it is registered.

A mark that does not meet all the requirements for registration on the Principal Register, but that is “capable of distinguishing the applicant’s goods or services,” 15 U.S.C. § 1091, may be registered on the Supplemental Register. The test is not whether the mark is already distinctive of the applicant’s goods, but whether it is capable of becoming so. In re Simmons Co., 278 F.2d 517, 519, 47 CCPA 963, 126 USPQ 52, 53 (1960). Thus a mark that is ineligible for registration on the Principal Register because it is “merely descriptive” of the goods or services, 15 U.S.C. § 1052(e), may be registered on the Supplemental Register. In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (CCPA 1977) (stating that “descriptiveness alone does not necessarily preclude registration on the Supplemental Register. 15 U.S.C. § 1091.”) (Citations are to the Lanham Act, which is the statute that controls trademark law.)

Judicial focus on the Supplemental Register has been sparse, perhaps because of the ease of registration thereon, coupled with the general policy favoring registration as a matter of public information and for other benefits. Eligibility for registration on the Supplemental Register, 15 U.S.C. § 1091, requires that the term does not meet the requirements of registration on the Principal Register but is deemed capable of achieving an association with the source of the product. For example, in In re Helena Rubinstein, Inc., 410 F.2d 438, 442, 56 CCPA 1110, 161 USPQ 606, 608 (1969), the court held that the term “pasteurized” for face cream, despite long use by the applicant, simply describes pasteurized *571  face cream and is incapable, de jure, of distinguishing the source of the goods.

A generic term – a common term – may not be registered, even on the Supplemental Register.  Generic terms are not eligible for registration on either register because the name of the good itself (e.g., ‘wine’) is incapable of distinguishing one producer’s goods from the goods of others.

Another path to registering the trademark.

Acquired distinctiveness refers to distinctiveness of a trademark that is not inherent (such as a merely descriptive trademark), but that rather develops through use of the mark  over time, such that consumers associate the mark with a secondary  meaning — as an indication of source — rather than just the term’s primary, descriptive meaning.  

“Distinctiveness is acquired by ‘substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglass Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984). In order to establish acquired distinctiveness, applicant must show that the primary significance of the proposed marks in the minds of consumers is not the goods or services but the source of those goods and services. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005);In re Ennco Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000).

Acquired distinctiveness may be shown by direct or circumstantial evidence. Direct evidence includes testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive amounts of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers. There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; however, the evidence required is in proportion to the degree of non-distinctiveness of the mark at issue. Yamaha Int. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988). Thus, even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness. Moreover, the burden is particularly heavy when that use has not been exclusive. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use not sufficient given similarity of configuration to other guitars). See also Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) (“long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive”).

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services. Trademark Rule 2.41(a)(3), 37 C.F.R. § 2.41(a)(3), states that an applicant may submit, in support of registration under Section 2(f), “appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith … and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.”

“To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005).

In 2018, Food Psych Programs, Inc. filed FOOD PSYCH as a trademark representing goods/services of “Downloadable podcasts featuring lectures and classes on health and nutrition.”  This was rejected as merely descriptive (“food” representing “health and nutrition” and the “psych” as “psychology” for the “lectures and the classes”).

To show acquired distinctiveness, there is a three-step process:

1. There is exclusive use.
2. There is continuous use.
3. There is much media coverage.

There is exclusive use.

The Examining Attorney has not found any third-party marks that would cause a likelihood of confusion on the Principal Register.  Also, unlike the situations in Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1404 (TTAB 2016); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1682-83 (TTAB 2007); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989), there are no third-party registrations or uses.  This means that the Applicant has had exclusive use of the phrase “Food Psych” in the goods/services applied for since the beginning of the claimed use.  

In addition to that use, the applicant in this case submitted an exhibit, showing podcast episodes since September 9, 2013.  That is continuous use of the relevant services in the trademark application through the calendar year of 2017, over 4 years.  The exhibit also shows the amount of downloads for each episode of the podcast.  Many episodes of the podcast have 50,000 or even 60,000 downloads.  In sum total, the “Food Psych” podcast has 3,104,612 downloads and the exhibit shows that over 2,000,000 of these downloads are from the United States.  Compare this to Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (“The sales figures for 14 years, standing alone and without any context in the trade, are not so impressive as to elevate applicant’s highly descriptive designation to the status of a distinctive mark.”); In re Boston Beer Co., 53 USPQ2d at 1058; In re Bongrain Int’l Corp., 13 USPQ2d at 1729. See also In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1888-89 (TTAB 2004).  The applicant has exclusive use of the mark in the goods/services in the application and the applicant has context to show that consumers relate the the applicant to the mark.

There is continuous use.

While Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) states that long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive, the Applicant has shown that the use is exclusive.  The exhibits the applicant submitted to the USPTO show that the use is continuous.  There are downloads starting in 2013.  There are reviews from consumers in 2013 in.  Both are true through the time of filing the trademark application and the time to respond to the USPTO office action rejection. This means there is over four years of evidence of continuous use at the time.  This is actual evidence of the continuous use over the period of time.

There is media coverage.

In determining whether the applicant has demonstrated acquired distinctiveness of the proposed mark for its goods, there must be an examination of the evidence of record, including any evidence of advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). In re Steelbuilding.com, 75 USPQ2d at 1424; Cicena Ltd. v. Columbia Telecomms. Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this list, no single fact is determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009). See also In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (“Direct evidence [of acquired distinctiveness] includes actual testimony, declarations or surveys of consumers as their state of mind. Circumstantial evidence, on the other hand, is evidence from which consumer association might be inferred, such as years of use, extensive amount of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers.”). In this instance, the applicant showed fifteen different media stories that include the use of the phrase FOOD PSYCH in relationship to the applicant and the owner of the corporate entity that is the applicant.  This is substantial evidence of the coverage of how known the mark is with consumers.

In this case, secondary meaning through acquired distinctiveness was shown with this additional evidence and the FOOD PSYCH trademark was registered.

Do you have questions about the registration of your mark?  Contact Verna Law, P.C., for a courtesy consultation about registering your trademark through our firm, a boutique intellectual property law firm.  Contact us at anthony@vernalaw.com or 914-908-6757.