Understanding Descriptiveness and Genericness in Trademarks

12 June, 2024
Nyall Engfield

Understanding Descriptiveness and Genericness in Trademarks

When selecting a trademark for your business, product or service, it's crucial to choose a mark that is legally protectable and enforceable. Two major pitfalls to avoid are marks that are deemed "merely descriptive" or "generic" by the United States Patent and Trademark Office (USPTO). Descriptive and generic marks face significant hurdles to registration and protection. Understanding the legal standards for descriptiveness and genericness, and strategies to avoid these objections, can help you develop a strong, defensible trademark from the start.

The Spectrum of Distinctiveness

Trademarks exist on a spectrum of distinctiveness, with the strongest marks being fanciful or arbitrary, and the weakest being generic. In order from most to least distinctive, the categories are:

Fanciful marks: Invented words with no meaning other than as a trademark (ex. Exxon, Kodak)
Arbitrary marks: Real words with a meaning unrelated to the goods/services (ex. Apple for computers)
Suggestive marks: Marks that suggest a quality of the goods/services but require some imagination to make the connection (ex. Coppertone for suntan oil)
Descriptive marks: Marks that merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the goods/services (ex. Creamy for yogurt)
Generic terms: Common name for the goods/services, not capable of functioning as a trademark (ex. Escalator, Aspirin)

Fanciful, arbitrary and suggestive marks are considered "inherently distinctive" and can be registered on the Principal Register. Descriptive marks can only be registered on the Principal Register with evidence of acquired distinctiveness (secondary meaning). Generic terms can never function as trademarks.

Merely Descriptive Marks

A mark is considered "merely descriptive" under the Lanham Act if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Some examples of marks found to be merely descriptive are:

CREAMY for yogurt
WORLD'S BEST BAGELS for bagels
APPLE PIE for potpourri
BED & BREAKFAST REGISTRY for lodging reservations

The USPTO will refuse registration of merely descriptive marks on the Principal Register. The rationale is that descriptive terms should be free for all competitors to use, and no single company should be able to monopolize descriptive language.

Merely descriptive marks can sometimes be registered on the Supplemental Register, which provides more limited benefits than the Principal Register. Over time, a descriptive mark may acquire distinctiveness (secondary meaning) if consumers come to recognize it as a brand, not just a descriptor. At that point, it may become eligible for the Principal Register.

Strategies to Avoid Descriptiveness

To reduce the risk of a merely descriptive refusal, consider these strategies when selecting a mark:

Choose arbitrary, fanciful or suggestive marks that do not directly describe your goods/services
The less the mark describes the goods/services, the stronger it will be.

Avoid laudatory terms like "best," "ultimate," "premier," or "supreme," especially combined with descriptive wording. Laudatory terms are considered descriptive.

Avoid describing the intended user or provider of the goods/services, as this is considered descriptive

. For example, "Roofer's Delight" for roofing tools.

Create incongruity, double entendre or ambiguity so the mark suggests multiple meanings, not just a descriptive one

For example, "The Farmacy" for an organic foods store is a play on "pharmacy" and "farm."

Intentionally misspell the descriptive term so it is no longer the standard dictionary spelling

But avoid alternate spellings that are the equivalent of the descriptive term.

Add distinctive design elements to descriptive wording to create a separate commercial impression

But the design must be more than minimally stylized text or simple shapes to make the overall mark registrable.

Conduct a search of the USPTO database to see if similar marks have been refused as merely descriptive for related goods/services

Examining Attorney and TTAB decisions can provide insight.

If a merely descriptive refusal is issued, you may be able to overcome it by arguing the mark is suggestive, proving acquired distinctiveness, amending to the Supplemental Register, or other strategies with the help of an experienced trademark attorney. But it's better to avoid descriptiveness in the first place.

Generic Terms

A generic term is the common name for the goods or services, not capable of distinguishing one source. Generic terms are incapable of functioning as trademarks under any circumstances. Some examples of generic terms are:

Escalator for moving staircases
Aspirin for pain relief medication
Cellophane for transparent wrapping
Trampoline for a rebound tumbling device

Generic terms are the weakest on the distinctiveness spectrum. They cannot be registered as trademarks, even on the Supplemental Register, because they merely name the product rather than identify its source. Allowing generic terms to be registered would unfairly prevent competitors from using the common name for their own goods. Even a previously distinctive mark can become generic through widespread misuse, a process called "genericide". Famous marks like Kleenex, Band-Aid and Google have had to fight to prevent their marks from becoming generic terms for the product. Xerox famously launched an ad campaign to curb misuse of its name as a synonym for photocopying.

Strategies to Avoid Genericness

To ensure your mark is not generic from the outset:

Choose a mark that does not literally name or define your goods or services. Marks that require imagination, thought or perception are stronger.
Avoid industry jargon, dictionary terms, and words commonly used to refer to your goods/services or their key aspects. Do your research to see how consumers and competitors talk about the product.
Don't use the mark as a noun or verb, but rather as an adjective modifying the generic product name. For example, use "Kleenex brand tissues," not "Kleenexes."
Use the ® symbol once the mark is registered and the ™ symbol for an unregistered mark to put others on notice.This communicates that you are claiming exclusive rights in the term as a mark.
Enforce your rights against infringers and educate the public, media and your own employees on proper use of the mark to prevent genericide. Monitor usage and take prompt action.

If the USPTO finds your mark to be generic, it will issue a refusal that can be difficult to overcome. In the rare case that the refusal is unwarranted, you would need strong evidence that consumers perceive the term as a trademark, not the common name for the goods. But in most cases, a generic refusal will require you to choose a new mark.

Conclusion

Steering clear of descriptive and generic marks is essential to developing a strong trademark that is legally protectable and enforceable. By understanding the distinctiveness spectrum and implementing strategies to avoid descriptiveness and genericness from the start, you can save time, money and headaches down the road. While there are some avenues to try to salvage a refused descriptive mark, it's much more difficult to rehabilitate a generic term. Whenever possible, choose an arbitrary, fanciful or suggestive mark to maximize your chances of success. Consulting with an experienced trademark attorney can also help you navigate these issues and secure valuable trademark rights for your business.

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