When applying for a trademark with the United States Patent and Trademark Office (USPTO), businesses often encounter various obstacles that can lead to trademark application refusal. Two primary reasons for rejection are that the mark is deemed merely descriptive or is considered deceptive. These determinations are made based on specific guidelines outlined in Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), which governs how an Examining Attorney assesses trademark applications. Understanding the distinctions between descriptive trademarks and deceptive trademarks is crucial for navigating the trademark registration process successfully.
Descriptive Trademarks and Their Impact on Registration
A trademark is classified as merely descriptive if it directly conveys a characteristic, feature, function, quality, purpose, or ingredient of the associated goods or services. According to TMEP §1209.01(b), even if a trademark describes just one aspect of the product or service, it may still be refused on the grounds of being merely descriptive. However, this determination is always made in relation to the specific goods or services, rather than in an abstract sense.
Examples of Descriptive Trademarks
To better understand this concept, consider the following examples:
- SWEET & CRISPY for chocolate chip cookies would likely be deemed merely descriptive because it conveys key characteristics of the product.
- BED & BREAKFAST REGISTRY for lodging reservation services also falls under this category since it directly describes the nature of the service being provided.
Because descriptive trademarks lack distinctiveness, they do not immediately qualify for registration on the Principal Register. Instead, applicants have two potential courses of action: seeking registration on the Supplemental Register or demonstrating acquired distinctiveness.
Overcoming Descriptive Trademark Refusals
If a trademark application is refused due to descriptiveness, the applicant may have the option to amend the application to the Supplemental Register. However, this option is available only if the application was filed based on actual use in commerce under Section 1(a) of the Trademark Act. If the application was filed under Section 1(b) (intent-to-use), the applicant must first submit an Allegation of Use that meets the requirements outlined in 37 C.F.R. §2.76(b) before requesting transfer to the Supplemental Register.
While the Supplemental Register does not grant the same level of legal protection as the Principal Register, it still provides some benefits, including the ability to use the registered trademark symbol (®) and limited protection against conflicting marks. Over time, if the mark acquires distinctiveness through extensive and exclusive use, the applicant may later seek registration on the Principal Register under Section 2(f) of the Trademark Act.
Disclaimers and Their Role in Trademark Registration
In cases where only a portion of the trademark is considered merely descriptive, the Examining Attorney may allow registration if the applicant provides a disclaimer for the descriptive element. A disclaimer is a formal statement indicating that the applicant does not claim exclusive rights to the descriptive portion of the mark by itself but still seeks rights in the overall composite mark.
For example, if a business applies for the trademark “SUNNY DAY LAWN CARE” for lawn maintenance services, the USPTO may require a disclaimer of “LAWN CARE” since it is a common phrase describing the service provided. However, the entire phrase “SUNNY DAY LAWN CARE” may still be eligible for protection if it possesses overall distinctiveness.
Disclaimers appear on the Certificate of Registration but do not affect how the trademark is used in advertising or branding. Their primary purpose is to prevent applicants from monopolizing commonly used descriptive terms while still allowing them to register distinctive trademarks.
Deceptive Trademarks and Misdescriptive Marks
While descriptiveness is a common reason for trademark application refusal, deceptive trademarks present a more significant issue because they can never be registered on either the Principal Register or the Supplemental Register. A deceptive trademark is one that misrepresents a material quality, function, composition, or characteristic of the goods or services in a way that influences consumer purchasing decisions.
Deceptively Misdescriptive vs. Deceptive Trademarks
A mark may also be considered deceptively misdescriptive if it falsely conveys an idea about a product or service. The distinction between a deceptively misdescriptive trademark and a deceptive trademark depends on whether the misrepresentation is material to consumers. If the misdescription is plausible but not essential to a purchasing decision, the mark may qualify for registration if it acquires distinctiveness. However, if the false impression is significant enough to influence consumer choices, the mark is deemed deceptive and is entirely ineligible for registration.
Examples of Deceptive and Deceptively Misdescriptive Trademarks
- “SILK TOUCH” for synthetic fabric clothing may be considered deceptively misdescriptive if the material is not actually silk but resembles silk in texture.
- “PURE GOLD JEWELRY” for gold-plated jewelry would likely be deemed deceptive because the phrase “PURE GOLD” falsely suggests the items are made entirely of gold, which could mislead consumers into making a purchase.
Since deceptive trademarks mislead consumers about essential aspects of the product, they violate Section 2(a) of the Trademark Act and cannot be registered under any circumstances.
Addressing Trademark Application Refusals
Receiving a trademark application refusal can be frustrating, but there are strategies to overcome these challenges:
- Arguing Against Descriptiveness:
- Provide evidence showing that consumers do not perceive the mark as merely descriptive.
- Demonstrate that the mark has acquired secondary meaning through long-term, exclusive use.
- Amending to the Supplemental Register:
- If the mark is descriptive but in use, applicants can request registration on the Supplemental Register.
- Providing a Disclaimer:
- If only part of the trademark is descriptive, applicants can disclaim that portion while securing protection for the full mark.
- Avoiding Deceptive Elements:
- Ensure the mark does not mislead consumers regarding material aspects of the goods or services.
The Importance of Legal Assistance in Trademark Applications
Navigating the complexities of trademark application refusal requires knowledge of trademark law and an understanding of how the USPTO evaluates marks. Because Examining Attorneys follow strict guidelines set forth in the TMEP, working with experienced trademark professionals can help applicants anticipate potential refusals and craft strong responses.
Legal professionals can assess whether a mark is likely to face rejection due to descriptiveness or deceptiveness, and they can advise on strategies to strengthen an application. In cases where an application is refused, they can prepare persuasive arguments or suggest alternative approaches, such as rebranding with a more distinctive trademark.
Conclusion
Trademark application refusal due to descriptive trademarks or deceptive trademarks is a common hurdle in the registration process. Understanding these categories and knowing how to address refusals can significantly improve an applicant’s chances of securing trademark protection. By carefully selecting a distinctive mark, providing evidence of acquired distinctiveness, or making necessary amendments, businesses can enhance their intellectual property rights and strengthen their brand identity.
While some refusals can be challenged, deceptive trademarks present a more serious issue, as they are entirely barred from registration. Given the intricacies of trademark law, consulting with an experienced Trademark Attorney can provide valuable guidance in securing a strong, protectable brand identity. Proper planning and strategic application can make all the difference in achieving a successful trademark registration.