What Makes a Trademark? Avoiding USPTO rejections for ‘generic’ or ‘merely descriptive’ marks
Trademarks are unique and arbitrary words, phrases images or sounds which identify goods and products and their source for consumers. However, not all phrases or marks used to brand products or services can be registered as trademarks with the USPTO. In particular, many marks may be rejected for lacking any distinctiveness or uniqueness. Therefore, you can better prepare yourself for the USPTO’s assessment of marks during the examination process by familiarising yourself with the standards for ‘generic’ and ‘merely descriptive’ marks as they are laid out in the USPTO’s Trademark Manual of Examining Procedures (‘TMEP’).
The information most relevant to understanding the USPTO officer’s assessment of the descriptiveness of a mark are contained in 1209.01-1209.01(c)(iii) of the TMEP. To help you better understand the USPTO’s test for descriptiveness, we have summarised, broadly and non-definitively, the Manual’s explanation of trademark descriptiveness or generic-ness, including some examples and key caselaw the Manual provides.
The first aspect of trademark descriptiveness examination to understand is that the USPTO views marks as categorizable along a scale of immediacy (for a person interpreting the mark) from the general or common terms for a good or service. Whereas merely descriptive or generic marks refer to a good or service with the same word(s) any person of the general public would use to refer to the good or service, ‘fanciful’, ‘arbitrary’ or ‘suggestive’ marks refer to designations that form an uncommon association with the goods or services – e.g. words that do not exist in the language yet (are fanciful), or commonly used words that are not commonly associated with the good or service (are arbitrary or suggestive). The examining officer is more likely to accept fanciful, arbitrary, and suggestive marks because their linguistic, conceptual remoteness from the product allows the mark to stand out as unique and therefore identify its unique producer, i.e. establish the mark as a distinct ‘brand’.
Given this model of immediacy and remoteness, the trademark applicant should apply the following test to consider whether their mark is too generic or descriptive:
1) What kind of goods and services does the mark intend to identify?
2) Does the mark duplicate or resemble the terms the relevant public would use to refer to that kind of goods and services?
An affirmative answer to the second question generally indicates that the mark is not registrable, i.e. a ‘merely descriptive’ or ‘generic’ mark that, because of its common use by the public or directness as a reference to the kind of product, is incapable of distinguishing itself as a unique source or identity of the brand’s product.
The following is a more detailed outline of the TMEP’s definitions and parameters for what kinds of marks it considers to be ‘merely descriptive’ or ‘generic’, and focuses on the second part of the above test.
Defining ‘Merely Descriptive’ Marks
The manual’s definition of ‘Merely Descriptive Marks’ is as follows:
“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services… Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services…”. [1209.01](b) (emphasis added)
Merely Descriptive Marks therefore expresses some direct commonly-held notion of the product. Here are examples of this kind of mark, along with caselaw, taken from the TMEP:
Merely Descriptive Marks: Some Examples
BED & BREAKFAST REGISTRY
Bed and breakfast lodging reservations services
In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)
MALE-P.A.P. TEST
Clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer
In re MetPath Inc., 223 USPQ 88 (TTAB 1984)
APPLE PIE
Apple-pie-scented potpourri
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
Some additional things to note:
· Description not generality: a mark is merely descriptive when it expresses a direct literal link between the words and product, and not necessarily in a manner that is already commonly used – the criteria is propriety rather than popularity, e.g. ‘chambered’ is not a commonly used term for pie made within pastry, but is directly descriptive of such a pie, therefore ‘chambered pie’ is a merely descriptive term
· Partial extent sufficient:
- A mark is merely descriptive even when it describes a single significant aspect (quality, function) of the product rather than the whole range of aspects of a product
- A mark is merely descriptive even when it describes a single subset of products of the goods and services indicated by the mark
Defining Generic Marks
Generic terms are ones that the public “understands primarily as the common or class name for the goods or services” [1209.01](c) (emphasis added). The ‘generic’ term in other words is both descriptive and generally used – on the registrability spectrum, it sits even further away from approval by a USPTO examiner than ‘merely descriptive’ marks.
One critical sign that a mark is generic is where the mark term could easily be applied to products of the same kind but from a different producer. Examples of marks that unregistrable in this category are therefore obvious and innumerable (e.g. the term ‘computer’ would be unregistrable for a new desktop data processing machine).
Notably, terms that are not necessarily empirically descriptive but well-known referents of the product are included in this category as unregistrable. This particular category of trademarks encompasses those ‘genericized’ trademarks, fanciful or otherwise registrable brand names that have become the common term for a product, e.g. a mark that includes the term ‘Aspirin’ for an acetylsalicylic acid medical treatment is likely to be unregistrable.
For more help evaluating or filing your trademarks, contact us at info@borderlesscounsel.com today!