Often, businesses struggle to describe their product or service to consumers while ensuring their brand is afforded strong trademark protection. Merely descriptive trademarks are on the lower end of the strength spectrum. Merely descriptive trademarks “describe an ingredient, quality, characteristic, function, feature, purpose, or use” of the applicant’s goods or services. [1]
Moreover, fanciful, arbitrary, and suggestive marks are inherently distinctive and thus registerable on the Primary Register. Trademarks found by the trademark office as merely descriptive cannot register on the Principal Register. However, if the trademark has acquired distinctiveness or secondary meaning, merely descriptive marks may be allowed on the Primary Register.
How do you show that a mark has acquired distinctiveness?
Overall, there are three ways to demonstrate that a mark has acquired distinctiveness.
- Five Years of Use. One of the easiest ways to show that a mark has acquired distinctiveness is through substantially exclusive and continuous use. In particular, applicants who have been using their trademark in commerce for five or more years can submit that their mark has acquired distinctiveness to the trademark office. However, the examiner has the discretion to accept less time or require more time.
- Prior Registrations. In certain situations, applicants will have a previous registration already on the Principal Register. Accordingly, registrations for the same mark and for closely related goods and services on the Principal Register is evidence that the pending application has acquired distinctiveness.
- Actual Evidence. If applicants do not have at least five years of use or another registration to show that their mark has acquired distinctiveness, applicants can submit other evidence. Such evidence can include revenues earned, advertising, unsolicited media coverage, customer declarations, market surveys, and the geographic reach of your goods or services. However, it is best to have either a prior registration or at least five years of use. Typically, evidence alone is not persuasive enough.
Takeaway
Overall, amending a merely descriptive application from the Primary Register to the Supplemental Register can be an effective way to overcome a merely descriptive refusal. However, during the application’s pendency, if you have five years of use, prior registrations, or substantial evidence of secondary meaning, your application can likely be placed back on the Primary Register.
Alternatively, for applicants who cannot demonstrate that their mark has acquired distinctiveness, all is not lost. The applicant reapplies once its mark has been used in commerce for five or more years. In the new application, the applicant will then assert five years of use in commerce. This will likely allow the new application to register on the Primary Register.
[1] MPEP §1209.09(b)
