Obtaining a trademark registration at the Trademark Office can get complicated. The USPTO could refuse registration for a number of reasons. Here is a quick list of tips for overcoming one of the more common refusals: A refusal based on the “mere descriptiveness” of the mark (e.g., when the mark describes a nature or feature of the goods or services, includes geographic references, is merely a surname, or is laudatory).
Top 4 Ways to Overcome a Descriptiveness Refusal
- Argue the mark is suggestive. It can be effective to argue that the mark does not directly describe the goods, but consumers would instead have to guess or infer the intended connected meaning. For instance, BLING SLINGER is likely not descriptive for a jewelry store, but instead suggests those services (i.e., BLING suggests jewelry and SLINGER suggests a seller). Suggestive terms are registrable, while descriptive terms may not be.
- Argue the term has other more relevant meanings. Point to dictionary definitions, or industry usage of the term with a different, non-descriptive connotation. For surnames, point out that the name is rare or very uncommon. For geographic terms, point out that the geographic place is remote or not well known. Also, it can be useful to point to a double entendre in your mark, to show another relevant and perceived meaning for consumers.
- Expert Affidavit. Pointing to an affidavit by an expert with knowledge of the field is a great way to force the USPTO to either accept the expert’s position, or claim that they somehow know better than the expert. Pick someone with good credibility and experience, and spell out their specific relevant experience.
- Disclaimer. Oftentimes, a descriptiveness refusal only relates to a portion of an applied-for mark (e.g., BREWERY in BIG BAD BREWERY is the only descriptive word). A disclaimer is essentially agreeing you don’t have exclusive rights to a descriptive word by itself, only as part of your entire mark. Such disclaimers are very common.
For more information about this topic, contact one of our trademark lawyers.
