Strategies for Responding to Descriptiveness Refusals

One of the most common responses is to argue that the examining attorney has improperly characterized the trademark as descriptive.

A suggestive mark requires imagination, thought, or perception to understand the connection between the mark and the goods or services. Suggestive marks are inherently distinctive and are eligible for registration without proof of acquired distinctiveness.

When making this argument, applicants often point out that:

• Consumers must exercise imagination to understand the mark.
• The mark does not immediately describe the goods.
• The mark has multiple possible meanings.
• The examining attorney has improperly dissected the mark into individual components instead of considering the mark as a whole.

Many successful responses focus on demonstrating that consumers must make a mental leap before understanding the relationship between the mark and the goods or services. However, if an applicant selected a highly descriptive trademark (such as those listed above), this may not be a viable option.

Sometimes a refusal can be overcome by narrowing or clarifying the identification of goods or services.

If the descriptive meaning only applies to certain goods or services, limiting the identification may eliminate the basis for the refusal.

For example, adding restrictions regarding the field of use, intended consumers, or specific product characteristics may distinguish the application from the descriptive meaning identified by the examining attorney.

Applicants should be careful, however, because amendments cannot broaden the scope of the application. Also, sometimes the addition of such restrictions is just not possible because it would exclude the very goods / services that the applicant wants to cover.

Even if a mark is descriptive, it may still be registrable if it has acquired distinctiveness—also known as secondary meaning.

To establish acquired distinctiveness, the applicant must show that consumers have come to recognize the descriptive term as identifying a single source rather than merely describing the goods or services.

Evidence may include:

• Long and substantially exclusive use
• Extensive advertising expenditures
• Sales success
• Consumer surveys
• Media recognition
• Declarations from customers or industry members

In some cases, five years of substantially exclusive and continuous use may support a claim of acquired distinctiveness, although additional evidence may be required for highly descriptive marks.

If the mark is already being used in commerce, another option may be to amend the application to the Supplemental Register.

While registration on the Supplemental Register does not provide all of the benefits of the Principal Register, it still offers valuable advantages, including:

• The right to use the ® registration symbol
• Inclusion in the USPTO trademark database
• The ability to cite the registration against later-filed confusingly similar applications
• A basis for foreign trademark filings in certain jurisdictions

Many businesses later seek registration on the Principal Register after the mark acquires distinctiveness.

Sometimes the examining attorney relies on dictionary definitions, websites, or third-party uses that do not accurately reflect how consumers perceive the mark.

Applicants may submit evidence showing that:

• The wording has multiple meanings.
• Third-party uses are limited or inconsistent.
• The cited evidence is outdated.
• Consumers do not immediately understand the descriptive significance asserted by the USPTO.

The strength of the evidence often determines the outcome.