One of the most challenging obstacles in the trademark registration process is a refusal under Section 2(e)(1), where an examiner determines that a mark is merely descriptive of the associated goods or services. The likelihood of successfully overturning such a refusal is low, with the Trademark Trial and Appeal Board (TTAB) upholding these refusals approximately 90% of the time. Recent reports have indicated that this rate can reach as high as 93%. While every case is unique, there are effective strategies that applicants can employ to increase their chances of success.
Understanding Merely Descriptive Refusals
A mark is considered merely descriptive if it immediately informs consumers about a feature, characteristic, function, or quality of the goods or services. As established in In re Chamber of Commerce of the United States of America, a mark must convey this meaning with specificity. If a mark is found to be descriptive, one path to securing registration on the Principal Register is proving acquired distinctiveness. This can be done through extensive use over five or more years, referencing prior registrations, or providing substantial evidence of consumer recognition. If acquired distinctiveness cannot be demonstrated, alternative arguments must be pursued.
Using Double Entendre to Overcome Descriptiveness
A strong argument against a merely descriptive refusal is proving that the mark functions as a double entendre. A double entendre occurs when a mark carries more than one meaning, with at least one interpretation not being merely descriptive. If a mark’s alternative meaning is unrelated to the goods or services, it may be eligible for registration. For instance, in In re Kraft, Inc., the TTAB found that “LIGHT N’ LIVELY” was not merely descriptive for reduced-calorie mayonnaise because “LIGHT” lost its descriptive significance within the full phrase. Marks that utilize wordplay, alliteration, or puns often stand a better chance of overcoming a descriptive refusal.
Demonstrating Incongruity
Another effective approach is highlighting an incongruity in the mark. When two or more terms are combined in a way that creates an unexpected or unusual meaning, the mark may be seen as suggestive rather than descriptive. In In re Dunham, the applicant successfully argued that “BRAND THERAPY” for graphic design consulting was suggestive, as the phrase implied a brand undergoing therapy, requiring an imaginative leap. Similarly, in In re Original Grain, LLC, the TTAB found “Original Grain” suggestive for restaurant services, reinforcing that ambiguity can work in an applicant’s favor.
Overcoming Descriptive Refusal with Intentional Misspellings
A deliberate misspelling of a descriptive word will not automatically allow a mark to avoid a descriptiveness refusal. However, if the misspelling creates a secondary meaning or introduces wordplay, it may support registrability. In In re Choice Traders LLC, “ARTIZEN” for essential oils was found to be more than a mere misspelling of “artisan” because it incorporated “zen,” suggesting a distinct commercial impression. Similarly, in In re Tea and Sympathy, Inc., “THE FARMACY” was deemed registrable for a store selling natural products, as it played on both “pharmacy” and “farm.”
Seeking TTAB Trademark Appeals for Descriptive Refusals
If an examiner maintains a descriptive refusal despite these arguments, an applicant can appeal to the TTAB. However, given the high rate of affirmed refusals, applicants must present compelling evidence and persuasive arguments. Demonstrating consumer perception, showcasing marketing efforts, and leveraging expert testimony can be beneficial in such appeals. The TTAB places significant weight on how consumers interpret the mark in the marketplace.
Conclusion
Overcoming a merely descriptive refusal requires a strategic approach and a deep understanding of trademark law. Whether by proving a double entendre, demonstrating incongruity, or highlighting an intentional misspelling with a secondary meaning, applicants have multiple pathways to argue against a refusal. When necessary, filing a TTAB trademark appeal can provide an additional opportunity for registration. For expert guidance on navigating trademark refusals, seeking professional legal consultation from a Trademark Attorney is highly recommended.