The Path to Registering a Descriptive Trademark - A Risky Road
Registering a descriptive trademark presents challenges that can be difficult to overcome. Do you know the requirements to establish secondary meaning?
What Is A Descriptive Trademark?
When thinking about a trademark, it is common to select one that describes your goods or services, or some quality or characteristic of them.
If you want to take the most direct path to trademark registration, a descriptive trademark is not the way to go.
Why Is Registering A Descriptive Trademark So Difficult To Do?
Simply stated, a trademark that describes your goods or services in some way is not as distinct as a trademark that consists of a made up or arbitrary word.
Trademark law operates on the premise that, the more distinct your trademark is, the more protection it receives.
In the spectrum of trademark strength, descriptive trademarks fall just above generic trademarks, which are not entitled to any protection and are free for anyone to use.
What If I Am Already Using A Descriptive Trademark?
How long have you been using the trademark and how much have you invested in promoting the mark?
If the answer is way less than five years, and the level of promotion not astronomically high, you would be wise to select a more distinct trademark.
*Pro tip - Add a new distinct trademark to your intellectual property portfolio, and maintain the descriptive mark as an unregistered slogan or sub-brand until your new trademark achieves significant consumer recognition.
What If I Am Set On Registering My Descriptive Trademark?
Because a descriptive trademark lacks distinction, it must acquire distinction in the marketplace. Consumers must associate the trademark to mean that a certain product correlates with the seller of that product.
Secondary meaning is highly subjective and as such determined on a case by case basis. Companies have spent millions promoting descriptive names and slogans while failing to achieve a satisfactory level of distinction for trademark registration. Take the case of Sam Adams parent company Boston Beer.
Best Beer In America? Maybe, But Not The Best Trademark.
The US Court of Appeals ruled that the phrase “The Best Beer in America” was highly descriptive in nature. Boston Beer could not overcome such a high burden in showing that the phrase had acquired secondary meaning.
One major reason for the defeat:
As is the case with many descriptive trademarks, the use of the slogan was shown not to have been exclusive, a factor that weighs heavily.
Evidence provided by the company included, use in commerce for over eight years, an annual advertising budget of over ten million dollars, and annual sales of over $85 million. In addition, $2 million was spent specifically for promotion of the phrase “The Best Beer in America”.
Should I Try And Register A Descriptive Trademark?
The dollars and facts needed to show acquired distinctiveness of a descriptive trademark vary with each case.
A true evaluation should balance the total accumulated investment of time and resources with the value that you place on the descriptive trademark and the burden you will need to overcome to prove that the trademark has acquired distinctiveness.
If you are early on in your use and promotion of a descriptive trademark, it is difficult to make an argument for continuing down that path.
Decisions regarding intellectual property can have significant effects long into the future. Only you can decide if the road to registering a descriptive trademark is one that is worth the risk to travel.