Apple is known, among other things, for its impressive set of trademarks, and its vigorous defense of those marks. But even Apple doesn’t win every time. The company recently attempted to register the term MULTI-TOUCH as a trademark. The United States Patent and Trademark Office rejected the application on the grounds that it was “merely descriptive” of the product and not distinctive enough for people to immediately associate the phrase “multi-touch” with Apple’s products.
Descriptiveness is a common issue in trademark law. A descriptive term, a term that is used to describe the functions, characteristics, size, or components of a product, will typically be denied registration on the USPTO‘s Principal Register of Trademarks (I will get into the Principal Register and its lesser sibling, the Supplemental Register, in a future blog post). This is because descriptive terms usually fail to perform the most basic function of trademarks: identifying the source of a product or service and distinguishing it from the products or services of other companies.
The test for descriptiveness is whether a term immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. In other words, if consumers would associate the term with a feature or characteristic of the good or service, the term is descriptive. These may seem like esoteric legal points, but in this case, it’s a fairly common-sense idea. Ask yourself if the proposed trademark, or part of the trademark, could be considered to describe the good or service that you’re providing. If so, it’s descriptive. Why does this matter?
The rationale behind prohibiting descriptive terms from being protected as trademarks is that we should allow competitors to use those terms to describe their products or services when they are marketing them to the public. The public would not be able to make a well-informed decision in selecting a particular product or service if the necessary terms to describe a product or service could not be used.
That’s not to say that descriptive terms are never allowed legal protection as trademarks. The USPTO allows a descriptive term to be protected as a trademark on the Principal Register when it has “attained a secondary meaning,” which is legal jargon for when the public regards the term as having been identified with one seller. Descriptive terms that have not met this qualification are allowed to be placed on the Supplemental Register, which provides a more limited set of rights – again, look forward to a future blog post regarding the Supplemental Register and all of its twists and turns.
Now that you’re an expert on descriptive trademarks, let’s go back to MULTI-TOUCH. In my opinion, and in the opinion of the USPTO, the term “multi-touch” is descriptive of the underlying product: a computer program that allows users to navigate through icons on a screen by touching the screen with more than one finger. This time, the USPTO got it right.
Things to Consider When You’re Considering a Trademark
- Laudatory terms, terms that express praise or admiration for the product, are likely to be considered descriptive terms. Examples include “best,” “original,” “famous,” and “most comfortable.” If the laudatory term purports to describe some quality of the product, it follows that such a term will be descriptive.
- Misspelling a descriptive term does not qualify the new word for trademark protection. For example, SPEX for eyeglasses was held to be a descriptive mark. Likewise, simply repeating a word multiple times- “Chairs, Chairs, Chairs” – or adding punctuation is not enough to transform a descriptive term into a trademark.
- A word, phrase, symbol, numeral, or letter that differentiates between various grades, styles, or models and does not designate their source is not a protectable trademark without a secondary meaning. These are “descriptive” because they distinguish one product by one source from another by the same source.
- Geographic terms are not legally protectable as a trademark until they have acquired secondary meaning. If the brand name in question is merely descriptive of the place where an article is manufactured or produced, it cannot be monopolized as a trademark.