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Avoid and Overcome Descriptive Objections under Section 2(e) of the Lanham Act

By Christopher P. Bussert and Christine P. James
December 30, 2004

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.

Overcoming 'Merely Descriptive' Refusals

According to Section 1209.01(b) of the Trademark Manual of Examining Procedure of the Patent and Trademark Office, “to be refused registration on the Principal Register under '2(e)(1) of the Trademark Act, 15 U.S.C. '1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

Unfortunately, the line between a descriptive mark and one with more suggestive qualities is anything but clear, and the issue is highly subjective. The means of assessing whether a mark is descriptive or suggestive are typically explained by the Trademark Trial and Appeal Board in the following fashion:

The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Remacle, 66 U.S.P.Q.2d 1222, 1224 (T.T.A.B. 2002).

The Board has added the following guidance:

It is not necessary, in order to find that a mark is merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used or is intended to be used, and the impact that it is likely to make on the average purchaser of such goods or services. Id.

In short, the assessment of descriptiveness cannot be made in a vacuum but must be informed by real-life circumstances.

The burden rests initially with the examining attorney to make a prima facie case of descriptiveness. The examining attorney is “not required to prove that the public would actually view a proposed mark as descriptive, but must establish a reasonable predicate for the refusal, based on substantial evidence, ie, more than a scintilla of evidence.” Evidence of the public's understanding of a term may be gleaned from “any competent source,” including newspapers, magazines, dictionaries, catalogs and other publications. The results of LEXIS-NEXIS searches showing descriptive uses are often used for this purpose, as are results of Internet searches.

If an examining attorney is unsure of the ultimate descriptiveness of the mark, it is not at all uncommon for the attorney to make the following inquiry of the applicant during the course of prosecution: “Applicant must indicate whether [the relevant term(s) in the mark at issue] has any significance in the relevant trade or as applied to the goods, any geographical significance, or any meaning in a foreign language.” The applicant's response to this inquiry must be carefully considered, as a failure to answer accurately may put the validity of any resulting registration in jeopardy. By the same token, responding in a manner guaranteed to prompt a descriptiveness objection, if it has not already been made, might seal the fate of the application.

Once the examining attorney makes a prima facie showing, the burden then shifts to the applicant to rebut that showing. The rebuttal can be made by argument as well as evidence. In theory, an applicant could simply argue that the mark as applied to the goods or services does not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; however, such an isolated, academic exercise is not always successful. Strategically, it is advisable to submit both argument and any available evidence to support a claim of inherent distinctiveness.

Some of the strongest arguments and evidence that one can submit to overcome a descriptiveness rejection are those demonstrating the absence of consumer perception of the mark as descriptive and, to a lesser extent, the absence of competitor use or need of the mark in a descriptive context. For example, it is well established that a mark will not be deemed descriptive if a multistage reasoning process, or the use of imagination, thought or perception is required to discern the nature or attributes of the goods or services associated with the mark. Demonstrating the existence of such a reasoning process, use of imagination, or a mental leap can be made in a variety of ways, including double-entendres; alliteration, rhyming, or other distinctive verbal components of the mark; incongruous grammatical usages; incongruous combinations of foreign and English terms; incongruous uses of individually descriptive terms; a clear disconnect between a standard dictionary definition of the term(s) comprising the mark and the goods or services associated with the mark; and even the absence of dictionary definitions.

Other arguments stressing the absence of competitive need for the mark at issue for the goods or services with which the mark is associated can also be persuasive in overcoming a descriptiveness rejection. The applicant must keep in mind, however, that this negative may be rather difficult to prove, but advertisements and catalogues from the applicant's direct competitors and trade magazines and literature are of probative value, as are LEXIS-NEXIS searches demonstrating lack of use of the mark at issue by competitors.

Another approach is to argue that the examining attorney's argument and evidence fail to meet the Patent and Trademark Office's burden of establishing a prima facie case, and in fact, it is not unusual for examining attorneys to rely on alleged evidence of descriptiveness that is not particularly credible, reliable, or probative with respect to the mark at issue. This approach has been successfully pursued, but usually is not alone successful. Nevertheless, on occasion the Board has disregarded the examining attorney's evidence when the applicant has been able to demonstrate that it lacks credibility. At a minimum, the argument and evidence put forth by the examining attorney should be carefully scrutinized.

At the end of the day, if the question of descriptiveness is a close one, doubt is to be resolved in the applicant's favor. Despite this doubt-resolving mechanism in favor of the applicant, it is nonetheless wise to make any evidence available of record during prosecution, if there is a reasonable argument to be made that a mark that has been rejected as merely descriptive is suggestive rather than descriptive.

Conclusion

Registrations for marks with descriptive properties are often difficult and expensive to obtain and maintain, and may not ultimately enjoy a broad scope of protection. In preparing and prosecuting applications for such marks and responding to descriptiveness refusals, trademark owners need to assess all possible alternative meanings or significance for the mark, keeping in mind those arguments that are of the most persuasive value and those that are not likely to sway the examining attorney. In general, the stronger the response's case on matters of consumer perception (ie, their viewing the mark as distinctive), the greater the likelihood of success in obtaining a registration. Such a comprehensive and carefully crafted response may often make the difference between an application's registration or abandonment.



Christopher P. Bussert CBussert@KilpatrickStockton.com Christine P. James CJames@KilpatrickStockton.com

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.

Overcoming 'Merely Descriptive' Refusals

According to Section 1209.01(b) of the Trademark Manual of Examining Procedure of the Patent and Trademark Office, “to be refused registration on the Principal Register under '2(e)(1) of the Trademark Act, 15 U.S.C. '1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

Unfortunately, the line between a descriptive mark and one with more suggestive qualities is anything but clear, and the issue is highly subjective. The means of assessing whether a mark is descriptive or suggestive are typically explained by the Trademark Trial and Appeal Board in the following fashion:

The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Remacle, 66 U.S.P.Q.2d 1222, 1224 (T.T.A.B. 2002).

The Board has added the following guidance:

It is not necessary, in order to find that a mark is merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used or is intended to be used, and the impact that it is likely to make on the average purchaser of such goods or services. Id.

In short, the assessment of descriptiveness cannot be made in a vacuum but must be informed by real-life circumstances.

The burden rests initially with the examining attorney to make a prima facie case of descriptiveness. The examining attorney is “not required to prove that the public would actually view a proposed mark as descriptive, but must establish a reasonable predicate for the refusal, based on substantial evidence, ie, more than a scintilla of evidence.” Evidence of the public's understanding of a term may be gleaned from “any competent source,” including newspapers, magazines, dictionaries, catalogs and other publications. The results of LEXIS-NEXIS searches showing descriptive uses are often used for this purpose, as are results of Internet searches.

If an examining attorney is unsure of the ultimate descriptiveness of the mark, it is not at all uncommon for the attorney to make the following inquiry of the applicant during the course of prosecution: “Applicant must indicate whether [the relevant term(s) in the mark at issue] has any significance in the relevant trade or as applied to the goods, any geographical significance, or any meaning in a foreign language.” The applicant's response to this inquiry must be carefully considered, as a failure to answer accurately may put the validity of any resulting registration in jeopardy. By the same token, responding in a manner guaranteed to prompt a descriptiveness objection, if it has not already been made, might seal the fate of the application.

Once the examining attorney makes a prima facie showing, the burden then shifts to the applicant to rebut that showing. The rebuttal can be made by argument as well as evidence. In theory, an applicant could simply argue that the mark as applied to the goods or services does not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; however, such an isolated, academic exercise is not always successful. Strategically, it is advisable to submit both argument and any available evidence to support a claim of inherent distinctiveness.

Some of the strongest arguments and evidence that one can submit to overcome a descriptiveness rejection are those demonstrating the absence of consumer perception of the mark as descriptive and, to a lesser extent, the absence of competitor use or need of the mark in a descriptive context. For example, it is well established that a mark will not be deemed descriptive if a multistage reasoning process, or the use of imagination, thought or perception is required to discern the nature or attributes of the goods or services associated with the mark. Demonstrating the existence of such a reasoning process, use of imagination, or a mental leap can be made in a variety of ways, including double-entendres; alliteration, rhyming, or other distinctive verbal components of the mark; incongruous grammatical usages; incongruous combinations of foreign and English terms; incongruous uses of individually descriptive terms; a clear disconnect between a standard dictionary definition of the term(s) comprising the mark and the goods or services associated with the mark; and even the absence of dictionary definitions.

Other arguments stressing the absence of competitive need for the mark at issue for the goods or services with which the mark is associated can also be persuasive in overcoming a descriptiveness rejection. The applicant must keep in mind, however, that this negative may be rather difficult to prove, but advertisements and catalogues from the applicant's direct competitors and trade magazines and literature are of probative value, as are LEXIS-NEXIS searches demonstrating lack of use of the mark at issue by competitors.

Another approach is to argue that the examining attorney's argument and evidence fail to meet the Patent and Trademark Office's burden of establishing a prima facie case, and in fact, it is not unusual for examining attorneys to rely on alleged evidence of descriptiveness that is not particularly credible, reliable, or probative with respect to the mark at issue. This approach has been successfully pursued, but usually is not alone successful. Nevertheless, on occasion the Board has disregarded the examining attorney's evidence when the applicant has been able to demonstrate that it lacks credibility. At a minimum, the argument and evidence put forth by the examining attorney should be carefully scrutinized.

At the end of the day, if the question of descriptiveness is a close one, doubt is to be resolved in the applicant's favor. Despite this doubt-resolving mechanism in favor of the applicant, it is nonetheless wise to make any evidence available of record during prosecution, if there is a reasonable argument to be made that a mark that has been rejected as merely descriptive is suggestive rather than descriptive.

Conclusion

Registrations for marks with descriptive properties are often difficult and expensive to obtain and maintain, and may not ultimately enjoy a broad scope of protection. In preparing and prosecuting applications for such marks and responding to descriptiveness refusals, trademark owners need to assess all possible alternative meanings or significance for the mark, keeping in mind those arguments that are of the most persuasive value and those that are not likely to sway the examining attorney. In general, the stronger the response's case on matters of consumer perception (ie, their viewing the mark as distinctive), the greater the likelihood of success in obtaining a registration. Such a comprehensive and carefully crafted response may often make the difference between an application's registration or abandonment.



Christopher P. Bussert Kilpatrick Stockton LLP CBussert@KilpatrickStockton.com Christine P. James Kilpatrick Stockton LLP CJames@KilpatrickStockton.com

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