What to Do About a Merely Descriptive Trademark Refusal

A merely descriptive refusal means the examining attorney has concluded that your mark immediately tells consumers something about the goods or services: an ingredient, a quality, a function, a feature, a purpose or an intended user. The refusal is issued under Section 2(e)(1) of the Lanham Act, and it comes with evidence, usually dictionary definitions and web pages showing the term used descriptively in your industry. You have three realistic ways to answer it, and the right one depends on how descriptive the term is and how long you have used it. Our office action response service sees this refusal almost as often as likelihood of confusion, and it is often the more difficult of the two to overcome.

What merely descriptive means in a USPTO refusal

Descriptiveness is judged in relation to the goods and services in the application, not in the abstract. A word that is arbitrary for one product can be descriptive for another. The test is whether a consumer who knows what the goods are would immediately understand the term as describing them, with no imagination required. A combination of descriptive words is still descriptive unless the combination creates a new meaning beyond the sum of its parts.

Two related points shape the response. If only part of the mark is descriptive, the examiner will usually require a disclaimer of that part rather than refuse the whole mark, and agreeing to the disclaimer resolves the issue. If the examiner believes the term is generic, meaning it names the product itself, none of the options below will work, because a generic term can never be registered on either register.

Option 1: Argue that the mark is suggestive

A suggestive mark hints at a quality of the goods but requires a mental step to get there. If you can show that the connection between the term and the goods takes imagination, thought or perception, the mark is registrable without more. The strongest versions of this argument point to a double meaning, an incongruity, or an unusual combination of words that consumers would not read literally. Evidence helps: third-party registrations of similar terms for similar goods without disclaimers, and the absence of descriptive use of the term by competitors.

The argument is weak when the examiner’s evidence shows the industry already using the term descriptively. Our post on what makes a trademark strong explains the line between suggestive and descriptive; if your mark sits on the descriptive side of it, move to the next option rather than spending the response on an argument the examiner has already rejected.

Option 2: Claim acquired distinctiveness under Section 2(f)

A descriptive term becomes registrable when consumers have come to recognize it as identifying your goods, a status the statute calls acquired distinctiveness or secondary meaning. There are three ways to claim it.

• A verified statement that the mark has been in substantially exclusive and continuous use in commerce for at least five years. This is prima facie evidence of acquired distinctiveness, but the examiner may find it insufficient for a highly descriptive term and ask for more.
• Actual evidence: sales figures, advertising expenditures, the length and manner of use, unsolicited media coverage, declarations from customers or dealers, and survey evidence. Advertising that teaches consumers to look for the mark as a brand carries particular weight.
• Ownership of a prior registration of the same mark on the Principal Register for related goods, which can support a 2(f) claim for the new application.

A 2(f) claim concedes that the mark is descriptive, so it is usually made in the alternative to the suggestiveness argument. It can also be made as to only part of a mark.

Option 3: Amend to the Supplemental Register

If the mark is in use but has not yet acquired distinctiveness, you may amend the application to the Supplemental Register. A Supplemental registration allows the ® symbol, is cited by examiners against later confusingly similar applications, and supports a federal infringement suit. It does not carry the presumption of validity and ownership that a Principal Register registration carries, and it cannot become incontestable. An intent-to-use application must first file an allegation of use before it can be amended to the Supplemental Register.

The Supplemental Register is often the practical answer for a young brand with a descriptive name. Once the mark has been in use long enough to support a 2(f) claim, a new application for the Principal Register can be filed.

Choosing among the three, and what not to do

Argue suggestiveness when the term is at the border and the examiner’s evidence is thin. Claim 2(f) when you have five years of use or strong recognition evidence. Amend to the Supplemental Register when you have use but neither of the first two, and want protection on the record now. The options can be combined in the alternative within a single response.

What does not work is restating that the mark is not descriptive without evidence, or submitting a handful of favorable customer emails as proof of secondary meaning for a term that plainly describes the product. If the examiner maintains the refusal, the choices narrow to reconsideration or appeal, as our post on what happens after a final office action explains. And for the next product, the cheapest fix is a less descriptive name, which a trademark clearance search will flag before a USPTO trademark application is filed.

If you have a descriptiveness refusal in hand and are weighing these options, a consultation with Capitol Law Partners can tell you which one your evidence supports. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our descriptiveness refusal and office action responses page or schedule a consultation.