Why you should avoid merely descriptive trademarks

When you are choosing a trademark for your business, product or service, you want it to be distinctive and memorable. You want it to stand out from your competitors and convey your brand identity. You also want it to be eligible for federal registration and protection.

airplane in the sky with the word "American" printed across the windows

When you are choosing a trademark for your business, product or service, you want it to be distinctive and memorable. You want it to stand out from your competitors and convey your brand identity. You also want it to be eligible for federal registration and protection.

However, not all trademarks are created equal. Some trademarks are stronger than others in terms of distinctiveness and registrability. One type of trademark that you should avoid is a merely descriptive trademark.

What is a merely descriptive trademark?

A merely descriptive trademark is one that describes some aspect of your goods or services without identifying or distinguishing the source of those goods or services. It tells consumers what your goods or services are, do, have or offer, but not who provides them.

Some examples of merely descriptive trademarks are:

  • “Creamy” for yogurt

  • “Apple pie” for potpourri

  • “Bed & breakfast registry” for lodging reservations services

  • “Bronzer” for suntan oil

  • “Crystal Clear” for televisions

You may wonder how merely descriptive trademarks differ from suggestive trademarks. Suggestive trademarks are words that suggest some quality of the goods or services, but do not state that quality outright. They require some imagination or inference on the part of consumers to understand the connection between the mark and the goods or services.

Some examples of suggestive trademarks are:

  • Coppertone® for sun-tanning products

  • Greyhound® for bus transportation services

  • Jaguar® for automobiles

  • Netflix® for online video streaming services

  • Roomba® for robotic vacuum cleaners

Why are merely descriptive trademarks weak?

Merely descriptive trademarks are weak because they do not function as source identifiers. They do not distinguish your goods or services from those of others who may offer similar goods or services under different marks. They do not create a unique impression in consumers’ minds.

Merely descriptive trademarks are also weak because they are not federally registrable unless they acquire distinctiveness through extensive use in commerce over many years. This means that you cannot register your mark with the U.S. Patent and Trademark Office (USPTO) unless you can prove that consumers have come to recognize your mark as a source indicator.

To acquire distinctiveness, also known as secondary meaning, you need to show evidence such as:

  • The duration and extent of use of your mark

  • The amount and nature of advertising and promotion of your mark

  • The sales volume and market share of your goods or services under your mark

  • Consumer surveys or testimonials showing recognition of your mark

Acquiring distinctiveness can be difficult, time-consuming and expensive. It can also be uncertain whether you will succeed in proving secondary meaning to the USPTO’s satisfaction.

If you cannot register your mark with the USPTO, you will have limited rights and remedies. You will not be able to:

  • Use the registered trademark symbol ®

  • Sue for trademark infringement in federal court

  • Stop the importation of infringing goods

  • Register your mark in other countries based on your U.S. registration

  • Prevent others from registering confusingly similar marks

You will also have a harder time enforcing your mark against competitors who may use or copy it without your permission. You will have to rely on common law rights that are based on your actual use of your mark in a specific geographic area. This means that you may not be able to stop others from using your mark in different areas where you do not have a presence or reputation.

How can you avoid merely descriptive trademarks?

The best way to avoid merely descriptive trademarks is to choose a strong trademark that is inherently distinctive. This means that your trademark quickly and clearly identifies you as the source of your goods or services and does not describe them.

The strongest trademarks are fanciful or arbitrary trademarks. Fanciful trademarks are invented words that have no meaning other than as a trademark. Arbitrary trademarks are existing words that have no connection to the goods or services they identify.

Some examples of fanciful or arbitrary trademarks are:

  • Exxon® for petroleum products

  • Pepsi® for soft drinks

  • Apple® for computers

  • Amazon® for online retail services

  • Kodak® for cameras

These trademarks are distinctive and memorable because they do not convey any information about the goods or services they represent. They create a unique impression in consumers’ minds and function as source identifiers.

Fanciful and arbitrary trademarks are also easy to register and protect because they do not conflict with any existing marks or common words. They enjoy a high degree of legal protection and can prevent others from using similar marks for related goods or services.

We hope this blog post has helped you understand why you should avoid merely descriptive trademarks and how to choose a strong trademark for your business, product or service. If you have any questions or need help with your trademark application, please contact us today for a consultation.