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How to Avoid A Descriptive or Generic Trademark

The best way to establish a strong trademark is to create a brand name that is neither generic nor “merely descriptive”. In this blog post, I’ll explain what those terms mean and provide some tips on how to avoid running into these issues.

The Perks of a Powerful Trademark

Before diving into the details of avoiding descriptive or generic trademarks, let’s first explore the benefits of having a strong trademark. A robust trademark can serve as a powerful tool for businesses to stand out in the competitive marketplace and protect their brand identity. Some advantages of a strong trademark are:

  • Enhanced brand recognition
  • Greater legal protection
  • Higher valuation for your company, should you want to sell the business, obtain a loan, or bring in a partner

Now that we’ve explored the benefits of having a strong trademark, let’s delve into the specifics of how to avoid descriptive or generic trademarks to ensure your brand name is both distinctive and legally protectable.

Trademarks and the Branding Battlefield

Imagine you’re starting a business, and you’ve just come up with the perfect name for your product or service. You’ve invested time and money into developing your brand name, and now you want to protect it with a trademark. But what if your brand name is deemed “merely descriptive” or generic by the United States Patent and Trademark Office (“USPTO”)? This outcome may prevent you from being able to legally register your trademark and enjoy the protection that comes along with registration. This means that your competitors may be able to use the same or a similar brand name, and you may not be able to stop them from doing so.

A trademark is anything that identifies your products or services and distinguishes them from those of others. A strong trademark can be a valuable asset, as it helps customers recognize and trust your brand. However, not all trademarks are created equal. Some are weak and vulnerable to challenges, especially those that are merely descriptive or generic. The USPTO and the Trademark Trial and Appeal Board (“TTAB”) are responsible for determining the eligibility of trademarks, and they have specific criteria to determine if a trademark is too descriptive or generic.

The Slippery Slope of “Merely Descriptive”

A “merely descriptive” trademark is one that merely describes a characteristic, feature, quality, or function of the goods or services it represents. It’s not distinctive enough to be granted trademark protection. For instance, a company selling apples under the brand name “Crunchy Apples” would be considered merely descriptive. Such trademarks fail to distinguish the company’s products from others in the market.

One real-life example of a merely descriptive trademark refusal involves the case of In re TriVita, Inc., where a company tried to register the mark “NOPALEA” as a trademark for dietary supplements containing nopal juice. The USPTO found the mark to be merely descriptive, as “nopal” is a type of cactus, and “nopalea” is a genus of cacti from which nopal juice, the product at issue, is derived.  As a result, the court held that “NOPALEA” simply described the primary ingredient of the product, and the application was refused.

The “Generic Trademark” Dilemma

A “generic trademark” refers to a term that the relevant purchasing public understands primarily as a common name for the goods or services, rather than a brand identifier. In fact, one shouldn’t refer to a generic term as a trademark at all.

An example would be someone using the term “Bicycle Shop” for a store selling bikes. Generic terms can never acquire trademark protection, as they don’t distinguish one company’s products or services from those of others. Someone can open a bike shop across the street and also call their store “Bicycle Shop”, and neither competitor can do anything about the other one’s name.

A classic example of a term that was determined to be generic, and therefore not entitled to trademark protection is the case of Kellogg Co. v. National Biscuit Co., in which the term “shredded wheat” was deemed to be generic. The court decided that the term was merely the way to identify the product itself – a type of cereal made from shredded wheat – and was not a brand identifier. So both Nabisco and Kellogg were able to sell their products using the term “Shredded Wheat”.

Steering Clear of Descriptive and Generic Pitfalls

To avoid having your USPTO trademark application refused or challenged, you should strive to create a distinctive and unique brand name.

This can be done by using suggestive, arbitrary, or fanciful terms. Suggestive trademarks hint at the product’s characteristics but require some imagination to make the connection, like “Netflix” for a streaming service. Arbitrary trademarks have no connection to the goods or services they represent, such as “Apple” for a technology company. Fanciful trademarks are made-up words with no meaning, like “Kodak” for cameras.

Remember that the USPTO examines trademark applications on a case-by-case basis. You can conduct preliminary research using the USPTO’s Trademark Electronic Search System (TESS) to check if there are any similar or potentially conflicting trademarks already registered or pending. However, this is just a first step, as a TESS search won’t tell you if there are any other parties using an identical or similar brand name in the marketplace who haven’t applied for formal trademark protection. Consulting with an experienced trademark attorney is the best way to ensure that your chosen brand name is distinctive, strong, and unlikely to face any legal hurdles.

Bolstering a Weak Trademark

If you find yourself with a weak, descriptive trademark, all is not lost. You can still take steps to strengthen your trademark and potentially gain protection. One option is to establish “acquired distinctiveness” or “secondary meaning” for your mark. This means that, over time, consumers have come to associate your trademark with your specific goods or services, even if the mark is initially descriptive.

To prove acquired distinctiveness, you’ll need to provide evidence such as long and exclusive use of the mark, significant sales and advertising, and customer testimonials or surveys demonstrating that consumers identify your mark with your goods or services. In the case of Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., the food manufacturer Zatarain’s was able to demonstrate acquired distinctiveness for its mark “Fish-Fri” through years of continuous use, extensive advertising, and consumer recognition. Although the term “Fish-Fri” might initially seem descriptive for a fish fry coating mix, the court found that Zatarain’s had successfully established a secondary meaning, and therefore, the mark was eligible for trademark protection.

However, please be aware that this is at best the “least bad” option. You are much better off starting out with a strong, protectable trademark rather than hoping that you will be able to establish acquired distinctiveness through years of exclusive use of a descriptive mark.

Conclusion: Navigating the Trademark Terrain

Avoiding a merely descriptive or generic trademark is essential for the long-term success and protection of your brand name. By choosing a distinctive and unique brand name, conducting preliminary research, and consulting with a trademark attorney, you can ensure that your trademark is strong and defensible.

Armed with this knowledge, you’re now better prepared to navigate the complex world of trademarks and protect your brand from the pitfalls of merely descriptive or generic marks.

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