Descriptive trademarks occupy a unique position in the trademark spectrum, situated between generic and suggestive trademarks. Understanding their place requires an appreciation of the continuum of distinctiveness in trademark law, which ranges from generic (least distinctive) to fanciful (most distinctive).

As you probably know, all trademarks fall along a spectrum of distinctiveness:

Fanciful or Coined Words – An entirely invented mark that is inherently distinctive.

Arbitrary or Dictionary Words – A mark consisting of a known word that is thoroughly unrelated to the product or service being offered. An arbitrary mark is inherently distinctive.

Suggestive – A mark that indicates the nature, quality or characteristic of the products or services, but does not describe this characteristic; it requires imagination on the part of the consumer to identify.  A suggestive mark may be inherently distinctive.

Descriptive – A term used in connection with products or services and directly related to that meaning. This type of mark is not inherently distinctive but may acquire distinctiveness if it attains secondary meaning.

Generic – The common name for the products or services in connection with which it is used. Generic terms are not distinctive and cannot function as trademarks.

Thus, marks that are inherently distinctive are registrable on the Principal Register: these trademarks are considered prima facie registrable.

Descriptive Trademarks: The Middle Ground

Descriptive trademarks, therefore, occupy a middle ground. Unlike generic terms, they can achieve trademark status, but unlike suggestive marks, they do not start out with inherent distinctiveness. To be protectable, a descriptive mark must cross a threshold where the primary significance in the minds of the consuming public is not the product but the producer. This is the concept of acquired distinctiveness or secondary meaning.

For example, a term like “Sharp” for TVs initially seems descriptive (suggesting high-resolution images). However, over time, it can gain recognition as a brand, distinguishing it from merely a description of the product’s characteristics.

The Importance of Context and Usage

In practice, whether a trademark is descriptive or suggestive can be a nuanced determination, heavily dependent on context and consumer perception. Sometimes, the line between these categories is thin and subject to interpretation. For instance, a term might be suggestive in one context but descriptive in another, depending on how consumers perceive it relative to the goods or services offered.

The positioning of descriptive trademarks between generic and suggestive marks highlights the importance of how a term is perceived by the public. While not initially distinct, these marks can evolve into strong, protectable assets with the right strategy and consumer association, making them a crucial consideration in branding and marketing efforts.

A broad range of evidence, encompassing both indirect and direct forms, can be employed to establish that a trademark under consideration has attained distinctiveness as defined by §2(f), as per the precedent set in Yamaha International Corporation v. Hoshino Gakki Co., 840 F.2d 1572, 1583 (Fed. Cir. 1988). Any relevant evidence, which may encompass “verified statements, depositions, and other suitable evidence,” that addresses the “duration, extent, and nature of use” of the trademark in the marketplace is considered acceptable. This includes advertising and marketing expenses, consumer surveys, and press coverage, all of which can contribute to demonstrating the acquired distinctiveness of the trademark in question.

It is crucial to recognize that the more a trademark leans towards being descriptive, the greater the challenge in proving its acquired distinctiveness under §2(f). Consequently, the quantity and variety of evidence needed in a response to §2(f) will differ based on the specific nature of the trademark. This principle is outlined in the Trademark Manual of Examining Procedure (TMEP) §1212.06.

While the USPTO evaluates acquired distinctiveness on an individual basis, a successful §2(f) claim often includes several key elements:

1. Sales Data: Demonstrating the brand’s popularity through sales figures, particularly highlighting growth resulting from marketing efforts utilizing the applied-for mark. This indicates that the mark is used as a source identifier, rather than merely for decoration, information, or other business functions.
2. Advertising and Marketing Spend: Detailed data on advertising expenses and marketing efforts. This should ideally link the mark with the source of a product or service. For instance, “Look for” campaigns (e.g., “Look for Sudsy Soap in the beauty section”) can be particularly effective.
3. Media Coverage: Instances of unsolicited media attention that mention or praise the products or services in relation to the applied-for mark.
4. Historical Use: Evidence that the mark has been in commerce for over five years. While necessary, duration alone is insufficient to prove acquired distinctiveness under §2(f).

Additional factors contributing to a mark’s distinctiveness may encompass:

• Social media metrics, such as follower count and engagement levels.
• User activity data, particularly relevant for software companies (daily, weekly, or monthly active users).
• Consumer feedback on eCommerce platforms or customer testimonials.
• Search engine optimization (SEO) data.
• Third-party produced accessories linked to the mark.
• Popularity of branded merchandise and corporate swag, which may highlight the mark’s distinctiveness independent of the primary product or service.

If the aforementioned types of evidence are available, they can significantly bolster your trademark registration efforts.

I must also highlight that the cost for handling such trademark cases is typically higher due to the extensive preparation of documentation required for the USPTO submission. This process is both meticulous and time-consuming. For cases involving descriptive trademarks that require proof of acquired distinctiveness, the average fees among IP lawyers can range from $4,000 to $5,000 or more. The exact cost depends on the complexity of the case and the volume of evidence that needs to be compiled and presented.