You spent weeks brainstorming the perfect name for your new business. It describes exactly what you do. It’s catchy. It’s clear. You file your application with the United States Patent and Trademark Office (USPTO), confident that approval is just a formality.
Then, months later, you receive an Office Action. Refusal. The reason? Your mark is “generic” or “merely descriptive.”
This is one of the most common hurdles entrepreneurs face when trying to protect their intellectual property. It feels counterintuitive because marketing wisdom often tells us to be clear and descriptive. However, trademark law operates under a different set of rules. A name that makes perfect sense to a customer might be completely unregistrable in the eyes of the law.
Understanding why this happens—and how to navigate it—is crucial for securing the brand protection your business needs.
The Spectrum of Distinctiveness
To understand why the USPTO rejects certain names, you have to look at the “Spectrum of Distinctiveness.” Trademark law categorizes potential marks based on how strong or weak they are.
The goal of a trademark is to identify the source of goods or services, not just to describe the goods themselves. The stronger the mark, the easier it is to register and protect. The spectrum generally runs from strongest to weakest:
- Fanciful: Made-up words (Exxon, Kodak).
- Arbitrary: Real words used in unrelated ways (Apple for computers).
- Suggestive: Hints at the product without describing it directly (Netflix, Airbus).
- Descriptive: Describes a feature, quality, or characteristic.
- Generic: The common name for the product itself.
The USPTO draws a hard line between suggestive and descriptive. If your mark falls on the descriptive or generic side of that line, you are going to face significant challenges.
What Does “Merely Descriptive” Mean?
A mark is considered merely descriptive if it immediately conveys an idea of the ingredients, qualities, or characteristics of the goods or services. If a consumer sees the name and instantly knows what you are selling without using any imagination, it is likely descriptive.
The logic behind refusing these marks is fairness. The USPTO does not want to grant one business a monopoly over words that all competitors need to use to describe their products. If you sell cold ice cream, you shouldn’t be able to stop other ice cream shops from using the word “cold.”
Examples of Merely Descriptive Marks
Let’s look at some hypothetical examples to clarify this concept:
- “Creamy Vanilla” for yogurt: This describes a flavor and texture. Competitors need these words to describe their own vanilla yogurt.
- “Fast Car Wash” for a car wash service: This describes a characteristic of the service (speed) and the service itself.
- “Best Computer Repair”: Laudatory terms like “Best,” “Super,” or “Premier” generally don’t add distinctiveness; they are just descriptive boasting.
Can You Ever Register a Descriptive Mark?
It is possible, but it is difficult. You typically have to prove that your descriptive mark has acquired “secondary meaning.” This means that through long-term use (usually five years or more) and extensive marketing, consumers now associate that descriptive phrase specifically with your company, rather than just the product generally.
Examples of descriptive marks that acquired distinctiveness include Best Buy or American Airlines. Originally, these were just descriptive terms, but now they are recognized brands. However, for a new small business, relying on acquiring secondary meaning is a risky and expensive long-term strategy.
The Kiss of Death: Generic Terms
If “merely descriptive” is a hurdle, “generic” is a brick wall. A generic term is the common name for the product or service itself. You can never register a generic term as a trademark, no matter how much money you spend on marketing or how long you use it.
If you could trademark a generic term, you could effectively ban anyone else from selling that product.
Examples of Generic Terms
- “Apple” for selling apples: While “Apple” is a strong trademark for computers, it is generic for a fruit stand.
- “Email” for an electronic mail service: You cannot own the word email.
- “Laundromat” for a laundry cleaning facility.
Sometimes, trademarks can actually become generic over time if the owner isn’t careful. This is known as “genericide.” Think of words like “escalator,” “aspirin,” and “zipper.” These were once brand names that lost their protection because the public started using them as the general name for the product.
The Gray Area: Suggestive vs. Descriptive
The battleground for many trademark applications lies in the blurry line between “suggestive” and “descriptive.”
A suggestive mark requires the consumer to use some imagination, thought, or perception to reach a conclusion about the nature of the goods. These are registrable.
- Jaguar (for cars): Suggests speed and grace, but doesn’t literally describe the car’s engine or wheels.
- Coppertone (for suntan oil): Suggests the result of using the product (a copper skin tone), but doesn’t describe the oil itself.
If you apply for a mark that you believe is suggestive, but the USPTO examining attorney decides it is merely descriptive, your application will be refused. This is where the specific legal arguments made in your application and subsequent responses become critical.
Why You Need an Attorney for Your Trademark Application
Many entrepreneurs try to file trademark applications themselves (pro se) to save money. Unfortunately, this often leads to wasted filing fees and lost time. The distinction between “suggestive” and “merely descriptive” is a matter of legal interpretation, not just common sense.
Here is why hiring an experienced trademark attorney is vital:
1. Comprehensive Search and Analysis
Before you even file, an attorney can conduct a comprehensive search. They don’t just look for exact matches; they analyze the “strength” of your proposed mark. They can warn you if your favorite name is likely to be flagged as descriptive, allowing you to pivot to a stronger name before you invest in branding.
2. Drafting the Application Correctly
The way you describe your goods and services in the application matters. An attorney knows how to craft these descriptions to minimize the risk of a descriptive refusal while still covering your business needs.
3. Responding to Office Actions
If the USPTO issues an Office Action claiming your mark is merely descriptive, it’s not necessarily the end of the road. An attorney can draft a legal response arguing why the mark is actually suggestive. They can cite past cases, Tribunal decisions, and specific evidence to persuade the examiner to withdraw the refusal.
4. Navigating the Supplemental Register
If your mark is definitively descriptive but you still want some protection, an attorney can advise you on the “Supplemental Register.” This doesn’t give you all the rights of the Principal Register, but it does allow you to use the ® symbol and can serve as a stepping stone to full registration later once you’ve established secondary meaning.
Protect Your Brand from the Start
Your brand is one of your most valuable assets. Don’t leave its protection up to chance or a misunderstanding of legal terminology. A refusal based on descriptiveness can delay your registration by months or kill it entirely, forcing a costly rebrand.
At L4SB, our trademark attorneys deal with the USPTO daily. We understand the nuances
Law 4 Small Business (L4SB). A Slingshot company. A little law now can save a lot later.
