After you file your trademark application, the United States Patent and Trademark Office (“USPTO”) may issue a trademark office action indicating that your mark is being refused registration on the basis that it’s merely descriptive of your products and/or services. This merely descriptive trademark refusal is based on the trademark examining attorney’s belief that your mark merely describes a characteristic, feature, quality, function, or purpose of the products/services listed in your application. Descriptiveness refusals are extremely common because people who file their own trademark applications or use a trademark document preparation service like LegalZoom, Trademarkia, or Trademark Engine aren’t generally aware that registering merely descriptive words and phrases as trademarks can be very difficult, if not impossible.
Merely Descriptive Trademark Refusal – What are My Options?
Although receiving a merely descriptive trademark refusal certainly isn’t ideal, the good news is that you likely have one or more options at your disposal to attempt to overcome the refusal. Of course, the option that’s best for you depends on a number of different circumstances. As such, it may be a good idea to consult with an experienced and knowledgeable trademark attorney to determine the course of action that has the greatest odds of successfully overcoming the refusal.
Option #1 – Present Evidence and Arguments
Your first option is to present evidence and arguments to attempt to convince the trademark examining attorney to withdraw the merely descriptive trademark refusal. This is an especially good option if there’s a legitimate question as to whether your mark does, in fact, describe something about your products/services. If the evidence and arguments are sufficiently persuasive, then your trademark will be approved for publication. If not, then the trademark examining attorney will issue a final office action indicating that the descriptiveness refusal is being made final. Should that occur, you may want to file a trademark appeal with the Trademark Trial and Appeal Board if you believe you have a strong case. Otherwise, you should consider one or more of the following options.
Option #2 – Amend to the Supplemental Register
If your trademark is clearly descriptive of your products/services such that presenting evidence and arguments will likely be unsuccessful, you can instead overcome the merely descriptive trademark refusal by amending your application to seek registration of your mark on the Supplemental Register. However, you may only amend to the Supplemental Register if your mark is in use in commerce in connection with the products/services recited in your application. So, if you filed your trademark application on an intent-to-use basis, you will need to file an Amendment to Allege Use prior to amending your application to the Supplemental Register. Once the examining attorney accepts the Amendment to Allege Use, it will approve your mark for registration on the Supplemental Register.
Option #3 – Section 2(f) Claim Based on Five Years of Use
If your trademark has been in substantially exclusive and continuous use in commerce for at least the previous five years, you may be able to overcome the merely descriptive trademark refusal by asserting a claim of “acquired distinctiveness” under Section 2(f) of the Trademark Act. Essentially, you’re claiming that the trademark should no longer be treated as merely descriptive because it has acquired distinctiveness in the minds of consumers through its substantially exclusive and continuous use in commerce over the past five years. In about 80% of cases, the trademark examining attorney will accept the Section 2(f) claim and approve your mark for publication. However, sometimes a trademark is so highly descriptive and in such wide use by third-parties that the examining attorney will reject the Section 2(f) claim. Should that occur, you have the option of (1) filing a trademark appeal, (2) amending your application to the Supplemental Register, or (3) making a Section 2(f) claim based on actual evidence of acquired distinctiveness (as explained below).
Option #4 – Section 2(f) Claim Based on Actual Evidence of Acquired Distinctiveness
If your trademark has not been in substantially exclusive and continuous use in commerce for the previous five years, or the trademark examining attorney has rejected your Section 2(f) claim of acquired distinctiveness based on five years of use, you have the option of making a Section 2(f) claim of acquired distinctiveness based on actual evidence. The kinds of evidence you may choose to submit to the examining attorney in support of your claim of acquired distinctiveness could include advertising expenditures, revenues generated, market surveys, unsolicited media coverage, sales figures, and customer declarations. If your evidence of acquired distinctiveness is substantial and persuasive, the examining attorney will accept the Section 2(f) claim and approve your mark for publication. If not, then the examining attorney will issue an office action making the merely descriptive trademark refusal final. In that event, you have the option of (1) filing a trademark appeal, or (2) amending your application to seek registration of your mark on the Supplemental Register.
Need Help Overcoming a Merely Descriptive Trademark Refusal?
I’m US trademark attorney Morris Turek. If you’ve received a merely descriptive trademark refusal, I would be happy to review the office action free-of-charge and to discuss your options and their associated benefits, drawbacks, and costs. I may be reached via email at firstname.lastname@example.org, by phone at (314) 749-4059, or by completing the contact form located toward the bottom of this page. I look forward to speaking with you soon.