By Daniel H. Bliss
Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark describes an ingredient, quality, feature, function, characteristic, or purpose of your goods/services? Can your trademark be too descriptive to obtain a registration from the U.S. Patent and Trademark Office? The answer is YES! if the mark is highly descriptive and has not acquired distinctiveness.
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), prohibits registration on the Principal Register of a mark that “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.” See T.M.E.P. §1209.01(b). A term is “merely descriptive if 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 United States, 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004) (citing Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 543 (1920)).
There are categories of descriptive marks ranging from slightly descriptive to highly descriptive. Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 972 (Fed. Cir. 2018) (quoting 2 J. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 11:25 (5th ed. 2018)). Whether a mark is descriptive is a question of fact, Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1364 (Fed. Cir. 2018), as is whether a mark is highly descriptive, Real Foods, 906 F.3d at 972 (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact.” (quoting DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012))).
What kind of marks have been found to be merely descriptive? Examples of such marks include NOPALEA for dietary and nutritional supplements, PATENTS.COM for computer software for managing a records database and tracking status of the records, BED & BREAKFAST REGISTRY for lodging reservations services, and MALE-P.A.P. TEST for clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer. What kind of marks have been found to be highly descriptive? Examples of such marks include “corn thins” for crispbread slices predominantly of corn, namely popped corn cakes and “rice thins” for crispbread slices primarily made of rice, namely rice cakes. Real Foods, 906 F.3d at 973-33.; see also In re Hikari Sales USA, Inc., 2019 WL 1453259, at *17 (T.T.A.B. 2019) (“In this case, we find that the designation ‘Algae Wafers’ is highly descriptive of fish food.”)
If your mark is descriptive, what are your options for registration? Under Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), nothing prevents the registration of a mark used by the applicant which has become distinctive of the goods/services in commerce. In other words, if your mark has obtained acquired distinctiveness, you may be able to still obtain a...
