Describing Words Used As Trademarks

The fifth statutory exception prohibits the registration of describing words. A trademark uses describing words when the words relate to the nature or quality of the goods or services.  A mark may also use describing words if it describes a geographical connotation or is a geographical name or term that is not obscure. Finally, a mark uses describing words if it describes a person (i.e., the mark is primarily a surname).  Given names, however, do not suffer from this defect.  For example, JOE’S CRAB SHACK is not merely descriptive of restaurant services.

A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods or services.  This is a high standard but the line between marks that are suggestive and immediately registrable from those that are merely descriptive is often a fine one. The most popular test with courts for determining whether a term suggestive is the “imagination” test.  Under the imagination test, a term is suggestive if it requires thought or perception for the purchasing public to reach a conclusion as to the exact nature of the goods or services.  If the mental leap between the word and the attributes of the product or service is not almost instantaneous, this strongly indicates suggestiveness, not mere descriptiveness.

It is important to keep this unprotectable categories in mind when creating subject matter to function as a trademark or service mark.  Equally important during the creative process is an understanding of the spectrum of distinctiveness and the several degrees of distinctiveness a potential mark possesses.  The varying degrees of distinctiveness are measured on a spectrum or sliding scale called “the spectrum of distinctiveness.”  The spectrum of distinctiveness includes the five categories of marks:  (A) generic; (B) descriptive; (C) suggestive; (D) arbitrary; and (E) fanciful.

While a likelihood of confusion is the primary consideration of a trademark search, descriptiveness should also be considered because a descriptive mark may take as along as five years to acquire any trademark rights.

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