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Avoid and Overcome Descriptive Objections under Section 2(e) of the Lanham Act
Section 2(e) of the Lanham Act provides that no trademark shall be refused registration unless it consists of a mark which when used on or in connection with the goods or services of the applicant is merely descriptive or deceptively misdescriptive of them. Despite this caveat, trademark owners gravitate toward descriptive marks because they easily convey to the intended user something about the nature or characteristics of the goods or services. Because of that easy association, some trademark owners believe that they can obtain “exclusive” rights to a mark without having to expend the large amounts of money typically required to educate consumers of the connection between a mark and the goods or services with which it is associated when a less descriptive mark is adopted. For those who are keen to register marks that have some descriptive qualities but also hold the capacity for distinctiveness, taking appropriate precautions in preparing the application and presenting evidence of distinctiveness to the Patent and Trademark Office may greatly increase the likelihood of obtaining a Principal Register registration.
Filing Applications for Descriptive Marks
In many cases the descriptiveness battle is lost at the time of filing of the application. A lack of care in preparing the application, particularly the recitation of goods or services; a failure to review specimens of use carefully for descriptive language before they are submitted; or a failure to ascertain at the outset the descriptive qualities of the mark at issue can all spell the premature demise of an application even though the mark may have ultimately merited registration. For example, while the recitation of goods or services must be accurate, the applicant should ensure that the language used does not plainly establish the descriptiveness of the mark. One standard rule of thumb is to ensure that the word(s) that comprise the mark are not being used descriptively in the application's recitation of goods or services. Similarly, the applicant should vet carefully the mark in specimens of use and the words chosen to describe the services or goods associated with the mark; a descriptive use of a mark in specimens of use or advertising materials may make it impossible to overcome a descriptiveness rejection.
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