How to Overcome a “Merely Descriptive” Trademark Refusal

How to Overcome a “Merely Descriptive” Trademark Refusal

One of the more difficult refusals to overcome is a Section 2(e)(1) refusal, where it is alleged that the trademark is merely descriptive of the goods or services. When these types of refusals are appealed, the Trademark Trial and Appeal Board (the “Board”) affirms the refusal 90% of the time. Each case is fact specific, but certain arguments seem to be more effective than others in overcoming these types of refusals.

What Is a “Merely Descriptive” Trademark Refusal?

A merely descriptive trademark is a term or phrase that directly describes the nature, quality, or characteristic of the goods or services being offered. Merely descriptive trademarks are generally not registrable because they do not serve as an indicator of the source of the goods or services, and they can be used by anyone in the industry.

Examples include:

• In re Abcor Development Corp. (1982) – Abcor sought to register the mark “Bikini” for a line of swimsuits. The USPTO refused registration, finding the mark to be merely descriptive of the goods. The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, finding that the term “Bikini” described a specific type of swimsuit.

• In re Bright-Crest, Ltd. (1998) – Bright-Crest sought to register the mark “Bright” for lighting products. The USPTO refused registration, finding the mark to be merely descriptive of the goods. The TTAB affirmed the refusal, finding that the term “Bright” described the brightness or intensity of the lighting products.

• In re Dial-A-Mattress Operating Corp. (1995) – Dial-A-Mattress sought to register the mark “Dial-A-Mattress” for telephone and mail order retail services in the field of bedding. The USPTO refused registration, finding the mark to be merely descriptive of the services. The TTAB affirmed the refusal, finding that the mark described the method of ordering mattresses by phone.

In each of these cases, the mark was found to be merely descriptive because it directly described the goods or services being offered. As a result, the marks were not registrable unless the applicant could demonstrate that the mark had acquired secondary meaning or had become distinctive through use in commerce.

How to Overcome a “Merely Descriptive” Trademark Refusal

One way to overcome a merely descriptive refusal is to provide evidence that the mark has acquired secondary meaning. Secondary meaning is when the public has come to associate the mark with a particular source of goods or services, even though the mark is descriptive on its face. For the basics on this topic, see our webpage entitled, What Is Acquired Distinctiveness and Secondary Meaning?

What If I Cannot Prove Acquired Distinctiveness?

If an applicant cannot prove acquired distinctiveness through five or more years of use, from relying on prior registrations for the same mark on the Principal Register or through other evidence, other arguments must be made to overcome the refusal.

Argument 1 – Mark Comprises a Double Entendre 

One argument that has been successful with the Board and with the USPTO to overcome a merely descriptive trademark refusal is that the mark comprises a double entendre, meaning that the mark has a secondary, alternative meaning that is not directly descriptive of the goods or services being offered.

This argument relies on the idea that the mark can be interpreted in two ways, with one interpretation being suggestive or fanciful and the other being descriptive. The key is that the suggestive or fanciful interpretation is sufficiently prominent or well-known that consumers are likely to recognize it.

To support a double entendre argument, the applicant would need to provide evidence that the proposed mark is used in a way that conveys the secondary meaning to consumers. This could include evidence of advertising or marketing that emphasizes the suggestive or fanciful meaning of the mark, or evidence of widespread use of the mark in the industry that has established the secondary meaning.

See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), where the Board didn’t require a disclaimer of “LIGHT” apart from the mark “LIGHT N’ LIVELY” for reduced calorie mayonnaise. Even though “LIGHT” had a merely descriptive significance, when used as a phrase “LIGHT N’ LIVELY,” the Board held that the term “LIGHT” lost its descriptive meaning. Often alliteration in the mark assists in tipping the scales towards perceiving the terms as a unitary phrase and not as individual parts.

If the mark has multiple interpretations, this must be apparent to the public from the mark alone. See In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005), where the Board held that the second meaning must be apparent from the mark itself. If the public would need to view the mark alongside the trademark dress, advertising material, or other promotional materials to understand the secondary meaning, then it is not a double entendre. The following cases held the mark was a double entendre:

• In re National Tea Co., 144 USPQ 286 (TTAB 1965) – NO BONES ABOUT IT for fresh pre-cooked ham
• In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) – SUGAR & SPICE for bakery products
• In re Simmons Co., 189 USPQ 352 (TTAB 1976) – THE HARD LINE for mattresses and bed springs

Argument 2 – Mark Combines Two or More Terms Creating Incongruity

Another argument that has been successful in overcoming a merely descriptive refusal is when the mark combines two or more terms creating incongruity. If there is incongruity, the mark will be considered unitary, and no disclaimer will be required of the nondistinctive elements. See In re Dunham, Serial No. 86941745 (April 6, 2018) [not precedential], where the applicant argued that the mark BRAND THERAPY for consulting in the field of graphic design created incongruity of a brand going through therapy. The USPTO did not produce evidence that third parties used the term to refer to graphic design services. The Board held that though and imagination were required to leap past the incongruity to discern a descriptive quality, and therefore the mark was suggestive.

If the mark creates ambiguity and requires some imagination or thought to comprehend ad descriptive feature or characteristic, the mark is suggestive. See also In re Original Grain, LLC, Serial No. 87511343 (January 23, 2020) [not precedential], where the Board reversed a merely descriptive finding for Original Grain for restaurant services. The Board underscored that any doubt as to descriptiveness must be resolved in favor of the applicant. 

Intentional Misspellings of Descriptive Words

Lastly, in cases involving intentional misspellings of descriptive words, a misspelling will not overcome a descriptive refusal if consumers would perceive the alternate spelling as the equivalent of the descriptive term. Thus, there must be an argument that the misspelling was selected because of a secondary meaning of the misspelled word. 

For example, see in re Choice Traders LLC, Serial Nos. 87770413 and 87950215 (March 31, 2020) [not precedential], where the Board held the mark ARTIZEN for essential oils and related products was more than a misspelling. The Board reasoned that consumers would understand there as a play on words involving the term “zen.” The Board agreed with the applicant’s argument that the mark ARTIZEN was an inventive word, and an incongruous play on the word ARTISAN, creating more than one meaning and a different commercial impression than the word ARTISAN. Applicant argued that the essential oils used in aromatherapy will evoke a zen-like feeling. 

Similarly, see in re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) [precedential], where the Board reversed a descriptive refusal for the mark THE FARMACY for a retail store featuring natural herbs and organic products. The Board agreed with the applicant that the mark THE FARMACY had a double meaning and was a play on the word’s pharmacy and farm.

Questions Regarding Merely Descriptive Refusals or Other Trademark Related Inquiries?

If you have any questions regarding merely descriptive refusals or other trademark related inquiries, please contact us. We can be reached at 1 800-651-7301, via email at info@trademarkattorneyslosangeles.com, or through our contact form below.