Trademark Principles for Non-Distinctive, Merely Descriptive “Marks”. Some well-known examples are: Suggestive trademarks are the most commonly used kind of trademark. Geographical names are likely to be terms other traders have a legitimate desire to use. For example, let’s look at the trademark registration for KENTUCKY GRILLED CHICKEN, which is owned by KFC Corporation. One of the basic considerations in examination is whether the proposed trade mark is a term that other traders will have a legitimate desire to use in connection with their own similar goods or services. Many trademark disputes and Office Actions center around the issue of whether a mark is merely descriptive of the goods and/or services or possibly generic. Many people request that I prepare applications for trademarks that are considered ‘merely descriptive’. Similarly if the word “Salon” is registered by Salon service then no other Salon can use it. For example, the trademark "Nike," along with the Nike "swoosh," identify the shoes made by Nike and distinguish them from shoes made by other companies (e.g. The plaintiff has the burden of proof in a secondary meaning case. It is actually a consumer protection law based on the origin of goods and services. The upside of descriptive names is that they clearly communicate your company’s core competency. A highly distinctive trademark is a “strong mark” while a trademark that is mearly descriptive is a “weak mark.” The strength of a trademark is relative to the identity of the business in the market and to the recognition established by its consumer base. Microsoft. Such descriptive marks may be rejected outright by the Trademark Office. Descriptive marks use … Now a days most common objection is raised over the description of goods or services in a Trademark application not properly filed, that is basically the description is not in accordance to the Nice classification. Fanciful Marks. Cocktail “Black Russian” (containing vodka and coffee liquor) was first manufactured in … Descriptive Trademarks have had similar problems in whether they can be registered as a Trademark, especially since it would be hard to prove in a passing off case as with Character Merchandising. A trademark registrant must file with the IPOPHL a petition under oath for the cancellation of a trademark registration. Learn more. A trademark is considered "merely descriptive" if the mark itself describes a quality or characteristic of the mark's goods or services. For example, you could submit an MP3 file of a television commercial for laboratory testing in the field of genetics and ancestry. “Developers” or “Coders” for software developers. But it generally takes a good deal of time and spending on marketing in order for a merely descriptive mark to acquire distinctiveness. 2. For example, describing a component within a dehumidifier as "honeycomb-shaped" was a fair use of a registered trademark for HONEYCOMBE dehumidifiers. Descriptive Fair Use requires: That the mark being used actually describes a person, place or attribute of goods or services; and. Descriptive trademarks are not registrable in Canada. In 2014, IP Australia marked its centenary. May, 2016 . For example, the TTAB found that the mark THE FARMACY for retail store services and online retail store services featuring natural herbs and organic products created a double entendre, and thus was not merely descriptive. Some descriptive mark examples are: 104 KEY : it describes how many keys are on a keyboard; therefore this could be considered descriptive. An example of a descriptive mark could be something like “comfy chair” if you use it to describe a particularly plush chair. b) the conditions of production of the goods or services. Lyrics – A songwriter’s lyrics are trademarks. B.Descriptive Marks. Trademarks that are merely descriptive cannot be registered on the Principal Register. Part of this registration, which is for “cooked chicken,” is generic and part is descriptive. Descriptive terms must acquire secondary meaning before any trademark rights are acquired – … ) Are they descriptive or fantasy? A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. A typical trend, particularly in the fast moving consumer goods sector, is to opt for “sub-brands” or trademarks that describe a product’s abilities, ostensibly to make it easier for consumers to relate to the product. For example, use 'X-BRAND database software is the market leader' rather than 'X-BRAND is the market leader'. A descriptive mark with minimal use (e.g. The strength of a trademark is relative to the identity of the business in the market and to the recognition established by its consumer base. A highly distinctive trademark is a "strong mark" while a trademark that is mearly descriptive is a "weak mark." When the public starts to identify a certain symbol, phrase, or mark with a product or business, that descriptive mark can be trademarked even if it wasn't allowed to be before. Subway Restaurants sought to trademark “FOOTLONG” for its sandwiches. Trademark examples include: 1. When the USPTO review’s a trademark application, on of the most common substantive refusal issues is a finding that the mark is “merely descriptive.” A mark that is found descriptive may still be registered, once in use, either (a) via the Supplemental Register, or (b) on the Principal Register with a showing of acquired distinctiveness. For example, If the wordmark “Apple” is chosen by a company selling Apples then it would be a descriptive trademark but if the wordmark “Apple” is chosen by a company selling computers then it is a non descriptive trademark. An example might be A geographic name is difficult to register unless it has been used extensively for goods or services for a long period of time. Marketing material showing a direct association between your trademark and the services; For example, you could submit a scanned copy of brochures and leaflets advertising or marketing various hospital services. Use the trademark as an adjective modifying the name of a product or service. 15 U.S.C. Under Section 2(e)(1) of the Trademark Act, when a trademark used on or in connection with the goods or services is merely descriptive, the trademark is refused registration on the Principal Register. This means that, although the protection for suggestive marks is strong, it can be more expensive or difficult to obtain this type of protection or to defend an infringement suit related to it. Trademark Paralegal Resume Examples. One may not register a word that describes a feature of the products or services. Descriptive marks are difficult to trademark and if you get one, you will have a hard time enforcing it against your competitors, since descriptive marks are inherently weak. Suggestive marks are doable, but often you need to work on convincing the Trademarks Office that your mark is suggestive, rather than descriptive. A deceptive trademark (as opposed to a deceptively misdescriptive trademark) is not eligible for registration with the United States Patent and Trademark Office (USPTO) under any circumstances. The USPTO wants to see an example of how the trademark appears in the real world. Examples of descriptive trademarks that have acquired distinctiveness include BANK OF AMERICA, SPORTS ILLUSTRATED, and MAJOR LEAGUE BASEBALL. Secondary meaning in trademark law refers to a way that a seemingly non-trademark-able term or phrase can be trademarked. The application was opposed by Pepsi Co Inc. on the grounds that the trademark was clearly descriptive and non-distinctive. “Greyhound” (bus line), “Mustang” (cars), and “Coppertone” (tanning lotion) are good examples. Since suggestive trademark encourages imagination and perception, it can be a very strong marketing tool. However, IBM owns the trademark today because it has “secondary meaning.” It's hard to get trademark rights for descriptive marks without gaining secondary meaning. trademark, COCA-COLA, began their lives as arguably merely descriptive terms with uncertain futures. For example, Pinterest, Microsoft, and Netflix are considered to be suggestive trademarks types. Some examples of descriptive trademark s include: If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive. For example, American Airlines® is a descriptive trademark because it is literally an airline in America, but after nearly a century of being the only airline to use that name, it has nevertheless acquired its own … Do Section 2 (f) of the Trademark Act allows registration of descriptive mark only if it has become distinctive of the applicant’s goods in commerce, i.e., if it has acquired secondary meaning. A merely descriptive mark is similar. First, in "appropriate circumstances" an appli-cant may claim ownership of one or more prior registra- To allow someone to trademark CAR would unfairly prevent everybody else from using that term in the sale of automobiles. Descriptive names are also notoriously difficult to trademark as, by definition, they rely on common words or phrases. The shape contained the word ‘PEPs’ along with a descriptive blurb that read ‘for coughs, colds & bronchitis.’ Australia's favourite trade marks. So, again, to differentiate, a merely descriptive trademark is not entitled to protection. Vision Center describes a place where eyeglasses can be purchased. In order to trademark a descriptive mark, a company must show that the mark has acquired what is called a “secondary meaning” in the marketplace. How do you know if your trademark is primarily geographically descriptive? A descriptive term can be protected as a trademark if it has secondary meaning (i.e., acquired distinctiveness). Descriptive Marks — These are terms that describe characteristics of goods or the goods themselves. Descriptive fair use: Using a descriptive mark in an ordinary, descriptive manner to describe a product or service. 5. GENERIC TERMS The generic or common name of a product or service can never function as a trademark. International Business Machines is an example of a merely descriptive mark. Initially, these names are clearly descriptive, but because of their market reach, they became proper trademarks for their owners. Once you can show that your descriptive mark has achieved a secondary meaning, you have developed a protectable trademark. You can achieve secondary meaning through long-term use or substantial amounts of advertising and publicity designed to get the public to associate your product with the descriptive term or word. To avoid this result, trademark owners should be careful to … Facebook 5. When selecting new brand names, brand owners must understand that descriptive terms are not protectable as “trademarks” upon first use. For each description you will need to select a corresponding international trademark class (“trademark classes”), which I explain below. 6. software for microcomputers) and KitchenAid (i.e. Use the trademark as it is registered and register it in the form in which it is used. When filing a trademark application in countries that use the Nice classification, the trademark owner will not only have to provide a description of their products or services, but also determine which class or classes they belong to, and therefore, in which class or classes they want their application to be filed. For example, class 25 has a heading or title of “Clothing, footwear, headgear. Under the doctrine of Descriptive Fair Use, a party, even a direct competitor, may use another party’s descriptive trademark to describe their own product or services. Examples of descriptive marks that have acquired distinctiveness include COMPUTERLAND® for computer store services and VISION WORLD® for optical store services. § 1127. Here are a couple of examples of clearly descriptive marks that acquired distinctiveness: NATIONAL CAR RENTAL, KENTUCKY FRIED CHICKEN, AMERICAN AIRLINES, PAYLESS SHOES. Google and 6. example, the Patent and Trademark Office (PTO) has allowed Fox News Network to register the descriptive phrase “Fair & Balanced” for news- reporting services. However, in practice, the recent case Gufic Private Limited and Anr. Sheetz of Delaware, Inc. filed a trademark opposition opposing the registration of “FOOTLONG”, claiming that the term is indistinguishable from similar type foods (i.e., generic) because other food providers have used, and have the right to continue to use, that term generally. This is usually because the name refers to the geographic origin of the goods or service. The horse is not painted in completely, and there are areas in the horse that are transparent where the background appears. Suggestive marks can be misconstrued as descriptive marks, which do not receive trademark protection unless the mark has acquired a secondary meaning. machines that aid in … Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the goods or services. There are two distinct trademark systems for acquiring rights in a name. Some people consider it an intelligent way to use references to your benefit. For example, “Tubeless” for … There are also many different types of trademarksincluding For example, attempting to use the term CAR for an “automobile" would be generic. The continuum of distinctiveness in trademark law is also known as the continuum of descriptiveness, because the contiuum captures how closely related the word or symbol being used as a trademark is to the service or good sold. The example may be the Rospatent Decision of 2014 on trademark “BlackRussian,” the legal protection of which has been claimed for the alcohol beverages. A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. Some descriptive mark examples are: Specifically, a trademark is unregistrable if it is clearly descriptive or deceptively misdescriptive of: a) the character or quality of the goods or services with which it is associated. Grass appears below the horse, which appears to be painted in green and blue. For example, the applicant can attempt to claim acquired distinctiveness as to the mark, e.g., based on 5 or more years of use and promotion in commerce, under §2(f). In formal writing, as a general rule, trademarks should be avoided unless specific products or … A descriptive trademark that has acquired "secondary meaning" (e.g., that the trademark has become recognized by the relevant consumer pool as a brand of specific goods and services from a single source) may gain protection and be registered by the United States Patent and Trademark Office. 4. Apple and Shell are examples. Background . In general, there are two types of fair use: descriptive fair use and nominative fair use. This can be especiall… A trademark specimen is a sample of how the mark is actually used, in interstate commerce, in connection with the products and/or services you provide to the public. Merely descriptive trademarks have some trademark strength, but it is very low unless a company can present evidence that the public has learned to specifically associate that term with them. 8 The Lanham Act also grants exclusive rights in distinctive A descriptive mark describes a product or service, or its purpose, function, use, nature, quality, characteristics, ingredients or geographic origin. 5. Amazon 3. The best trademark examples are some of the most recognizable brands in the world. Your description cannot merely repeat the class heading or title of classes of goods and/or services. a. Nike b. Coca-Cola c. Bufferin d. Chicken of the Sea e. Lysol. Apple 2. Microsoft (i.e. Insofar as a trademark is concerned, a descriptive word identifies the characteristics of the product or the service to which the mark pertains. However, in some instances, various forms of evidence can overcome such a rejection. Suggestive trademarks: With suggestive trademarks, there is a link between the brand and this form of trademark, but it requires imagination on the part of consumers. Well, the USPTO asks the following three questions to determine whether a trademark is primarily geographically descriptive or not: 1. Secondary meaning is established when a mark has come through use to be uniquely associated with a specific source. An example of a design mark registrable on the Principal Register without requiring any showing of acquired distinctiveness is the CONSTRUCT-A-CLOSET design mark (US Trademark Registration No. Generic vs. Descriptive First, let’s look at the least (or not at all) distinctive marks: generic trademarks. Suggestive marks are close cousins to descriptive marks. Descriptive trademarks: Litigation lessons in India. GENERIC TERMS The generic or common name of a product or service can never function as a trademark. For example, where a food-products company adopted the descriptive (although uniquely spelled) name, Hygrade Food Products, the law did not preclude others from using the descriptive … Sometimes, the line between clearly descriptive and suggestive marks is very murky. It often boils down to an argument between you and the Trademarks Office. It is often subjective and inconsistent. Trademark Factory is a great example. A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another. versus Vasu Healthcare Limited (“Sallaki case”) proved that it is quite the opposite. Sugar Free is a descriptive mark as it draws a reference to the product containing ‘aspartame’, a sugar substitute. A trademark is a distinctive word, phrase, symbol, or design that identifies a product or service and is legally owned by its manufacturer or inventor. 2. The reason for this there is clear differentiating advantage in branding, i,e, it stands out and when done well tend to be “sticky”. Descriptive marks (what the “Supreme” mark is) are generally adjectives that describe the product or its functions, and only receive slightly more protection than generic marks. Similarly, an optics store known as Vision Center would also be deemed merely descriptive and not entitled to exclusive trademark … When I tell them that the mark is ‘merely descriptive’ and will be difficult to register… “Interstate commerce” refers to offering products or services, across state borders. familiar examples of descriptive marks include “Holiday Inn” to describe hotels, “All Bran” to describe cereal, and “American Girl” to describe dolls. c. An example of a generic trademark is: a. Clorox b. There are three basic methods for demonstrating acquired distinctiveness before the Patent and Trademark Office ("PTO"). Dairy Queen c. Bufferin d. Thermos e. none of the other choices. Which of the following is an example of a successful descriptive trademark? Geographic terms are generally categorized as follows: Descriptive. Dairy Queen Examples of once-strong trademarks that have become generic through descriptive or generic use include "yo yo," "cellophane," "trampoline," "escalator," "thermos," "aspirin" and even "raisin bran." The abbreviation is written as TM . The U.S. Patent and Trademark Office (the "USPTO") has provided some examples that are useful to consider when trying to understand when a mark is merely descriptive. The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service. The general principle behind trademark law is that the mark acts as an identifier to the public of the source of a good or service. As stated in the USPTO trademark manual [ TMEP § 1209.01 ], suggestive trademarks “require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” The nature of a mark, particularly its relative strength or It is often not clear-cut whether a trademark is suggestive or not. Sugar Free for a sugar substitute is a classic example of a descriptive mark. Hearing officer agreed with the applicant concerning the first ground of opposition. A suggestive trademark has wording that suggests characteristics of the underlying goods or services without saying it outright. Coca-cola 4. These trademarks are also distinctive, and they will relate to some kind of quality or characteristic of the product, but it will not actually describe it. A mark that is merely descriptive is one whose dictionary definition is synonymous with a quality of the good or service. For example, the Kentucky Fried Chicken trademark originally was found to be descriptive of its goods, namely, fried chicken, and the company could not register its trademark … Nonetheless, there are even more unique ways to create an interesting trademark. The potential downside is that they hamstring your brand as it grows and looks to diversify. “Cannabis” or “Weed” for legal marijuana businesses. Views Expressed Disclaimer. For example, McDonald’s has a trademark that is recognized worldwide – a giant yellow “M.” Trademarks in the U.S. are registered with the U.S. Examples of Descriptive Trademarks: “Truck Repair” for an auto body shop. For example, Views expressed disclaimers state that the views and opinions stated on a site or platform by contributors are not the same as those of the business.. “Creamy” for ice cream or cheese. Bob Seger and the Silver Bullet Band made a hit single … The background of the mark is transparent.”. Supplemental Register (for marks with minimal use) The USPTO maintains a second register, Supplemental Register, for trademarks that are capable of distinguishing an applicant’s goods or services, but not registrable on the Principal Register. An Insight Into Descriptive Trademarks In India. Examples of descriptive marks that have acquired distinctiveness include COMPUTERLAND® for computer store services and VISION WORLD® for optical store services. If you’ve received a merely descriptive trademark refusal, I would be happy to review the office action free-of-charge and to discuss your options and their associated benefits, drawbacks, and costs. Evocative Brand Names A trademark is a symbol, design, word, or phrase that identifies one business’ goods or services from those of another.A company may come up with a design that is unique, to stand as a symbol of the company, or a product.

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