Trademarks are positioned on a spectrum, spanning from fanciful and highly distinctive to highly descriptive, with generic marks ineligible for registration on the Principal or Supplemental Register. The level of distinctiveness or descriptiveness is ascertained through an evaluation of the trademark in relation to its associated goods or services. However, selecting a descriptive trademark entails several disadvantages.
1. Ineligibility for Principal Register Registration
Marks that are highly descriptive or merely describe goods or services cannot secure registration on the Principal Register, leading to the forfeiture of multiple benefits for the applicant.
2. Weakness of Descriptive Marks
Descriptive marks start as weak and only gain strength when they develop secondary meaning. If you want to learn more about this specifically, learn more about trademark supplemental register.
3. Increased Costs in Registration Process
Registering a descriptive trademark on the Principal Register poses a challenging and costly process. The USPTO Examining Attorney may issue a refusal under Trademark Act Section 2(e)(2), requiring a substantive argument from the applicant. In case of a final refusal, an appeal to the Trademark Trial and Appeal Board may be necessary, incurring substantial time and financial expenses.
4. Elevated Marketing and Advertising Expenses
Building consumer association with a descriptive mark demands a significant budget for marketing and advertising to achieve acquired distinctiveness, where the primary significance of the trademark is linked with the source of goods or services.
5. Risks in Litigation
Initiating or defending legal actions with a descriptive mark puts the trademark owner at a disadvantage. Owners on the Supplemental Register must prove key aspects in court, involving considerable time and financial investment, unlike owners with marks on the Principal Register who benefit from presumptions of validity, ownership, exclusive rights, and continuous use.
6. Diminished Brand Recall
Choosing a common or descriptive term for your trademark may result in the relevant purchaser struggling to remember your brand. In contrast, distinctive marks like STARBUCKS, ROLEX, and EXXON make a strong first impression and remain etched in the consumer’s memory, associating the mark solely with your goods or services.
7. Legal Complexities and Delay in Protection
Securing legal protection for a descriptive trademark involves navigating complex procedures and may result in delays. This complexity arises from the need to demonstrate acquired distinctiveness, making the process more intricate and time-consuming compared to distinctive marks.
8. Limited International Recognition
Descriptive trademarks may face challenges in obtaining international recognition, as their inherent nature often fails to transcend language and cultural barriers. This limitation can hinder global brand expansion and recognition.
9. Meaning Can Be Lost
There is also a risk that the literal meaning of a descriptive mark can shift or expand over time as products evolve. For instance, “Brick Oven Bakery” made sense decades ago for a bakery actually using brick ovens. But if conveyor ovens become standard, the literal meaning is lost, despite residual goodwill under that name. This can weaken the connection between the mark and product attributes in customers’ minds over time.
10. Limited Legal Protection:
Descriptive trademarks face challenges in obtaining full legal protection, as they are often ineligible for registration on the Principal Register, leading to a lack of benefits and advantages for the trademark owner.
11. Vulnerability to Copycats:
The descriptive nature of the mark makes it more susceptible to imitation by competitors, as the descriptive terms may be commonly used within the industry.
12. Difficulty in Building Brand Equity:
Establishing a strong brand identity and building brand equity is more challenging for descriptive trademarks, as they may not evoke a unique and memorable association with the source of goods or services.
13.Trademark Infringement Risks:
Descriptive marks may face higher risks of unintentional infringement, as other businesses within the same industry may independently choose similar descriptive terms for their own trademarks.
14. Risk of Genericide:
Over time, a descriptive mark may become so commonly used in everyday language that it risks becoming generic, losing its distinctiveness and rendering it ineligible for trademark protection.
15. Consumer Confusion:
The descriptive nature of the mark may lead to confusion among consumers, as they might have difficulty distinguishing between products or services offered by different companies using similar descriptive terms.
16. Risk of Obsolescence:
As industries evolve, the literal meaning of a descriptive mark may become outdated or irrelevant, potentially rendering the mark obsolete and diminishing its effectiveness over time.
17. Inability to Leverage Presumptions:
Unlike owners with marks on the Principal Register, owners of descriptive trademarks on the Supplemental Register do not benefit from presumptions of validity, ownership, exclusive rights, and continuous use, placing them at a disadvantage in legal proceedings.
18. Struggle in Creating a Distinctive Online Presence:
In the digital landscape, where a strong online presence is crucial, descriptive trademarks may face difficulties in standing out among competitors, leading to challenges in building a distinctive brand image online.
19. Difficulty in Licensing Opportunities:
The descriptive nature of the mark may limit opportunities for licensing, as potential licensees may be less inclined to associate themselves with a mark that lacks inherent uniqueness and distinctiveness.
20. Dependence on Continuous Marketing Efforts:
Unlike more distinctive marks that may have a lasting impact with minimal marketing, descriptive trademarks require ongoing and substantial marketing efforts to maintain consumer awareness and relevance.
21. Lack of Linguistic Portability: Descriptive trademarks often rely on words and phrases in a particular language, which makes them difficult to port to other linguistic markets when expanding internationally. A fanciful or arbitrary mark is more linguistically portable.
22. No Inherent Distinctiveness: Descriptive marks have no inherent distinctiveness or uniqueness, whereas fanciful/arbitrary marks are inherently distinctive as entirely created designations.
23. Consumer Misunderstanding: Consumers may misunderstand or misperceive the nature of the goods or services sold under a highly descriptive trademark. A suggestive or arbitrary mark avoids potential consumer misunderstanding.
24. Difficulty in Social Media Branding: Building a distinctive brand presence across social media platforms poses challenges when adopting a descriptive trademark. Non-descriptive marks have wider flexibility for social media branding.
25. Susceptibility to Generic Use: Highly descriptive marks using common terms have higher risks of becoming generic over time if the relevant consumer public begins using the trademark term as a name for the product category rather than as a brand.
26. Lack of Competitive Differentiation: Descriptive marks struggle to set a business apart from competitors in a distinct and memorable way, whereas arbitrary/fanciful marks intrinsically distinguish a brand.
27. Impedes Brand Extensions: Extending a descriptive trademark to new products or product lines can be problematic if the literal meaning no longer applies or causes consumer confusion. Non-descriptive marks have wider flexibility for brand extensions.
28. Language Changes Undermine Meaning: Shifts in language usage over time can undermine the descriptive relevance or clarity of a trademark’s literal messaging. Arbitrary marks sidestep this risk.
29. Impairs Prestige Perception: Descriptive marks may not cultivate the same elite or luxury perception as inherently distinctive coined marks.
30. Risk Confusing Consumers: Using common descriptive terms in a trademark heightens risks of consumer confusion due to likelihood of those terms being used in other marks. Coined/fanciful marks avoid this.
In summary, the most significant pitfalls of adopting a descriptive trademark relate to the difficulty of registering it for full legal protection, its inherently low distinctiveness compared to unique brand names, and the potential that its literal descriptive meaning will shift. Companies should weigh these disadvantages before settling on descriptive brand name. Combining descriptive and distinctive terms can balance the strengths and weaknesses.