The purpose of a trademark is to distinguish the products and/or services from one individual or business from the products and/or services of another individual or business. As such, descriptive terms used in connection with a trademark do not typically meet the purpose of a trademark. If a consumer immediately associates the terms used in connection with a trademark, with a quality, feature, function, characteristic, or ingredient of the product or service, the trademark will not be registered on the ground of trademark descriptive refusal. The USPTO Trademark Trial and Appeal Board (TTAB) has held that the test to determine descriptiveness is whether a term immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services associated with the trademark. Even if the proposed trademark immediately conveys information of only one characteristic of the good or service, then the entire trademark will be ruled descriptive.
The standard the USPTO examining attorney uses to determine whether a proposed trademark is descriptive is based on the perception of the relevant consumers that will be purchasing the goods or services. Identifying the relevant consumers is essential in this inquiry. The examining attorney may look at evidence from any relevant source to determine what the relevant consumers understanding of a given trademark is. This may include interviews, surveys, dictionaries, newspapers, etc.
Trademark Descriptive Refusal Examples:
Some examples of prior trademarks held to be descriptive are:
- Break and Bake – for frozen cookie dough
- America’s Best Popcorn! – for popcorn
- Juice Joint – for a juice shop
- Hotels.com – for an online hotel booking service
- Blackcard – for a premium credit card
Each trademark is different with regards to the terms used, the goods or services associated with the trademark, and the channels of trade used. As such, each decision is based on the evidence in front of the examining attorney and not prior decisions on trademark descriptive refusal. Moreover, trademark registration may still be allowed for a trademark that is descriptive as long as there is consumer acceptance and recognition that the descriptive trademark designates only one source for that product. This is known as secondary meaning or acquired distinctiveness.