"Merely Descriptive" Trademarks?

By Peter E. Morgan,

I am often asked by clients if they can register a trademark for what they think is a great domain name that they have been offered and which would undoubtedly drive search results to their website. Sometimes the client has already swallowed the hook and purchased the domain, perhaps for many thousands of dollars.

If it looks too good to be true, of course, it probably is. When an especially catchy domain name suddenly becomes available to you, while it is conceivable that it may be a great and rare opportunity, often the corresponding trademark has not been snapped up already because it would infringe on the rights of a prior trademark owner—sometimes a powerful one—and the seller, usually a domain broker, often in a foreign country, is banking on the buyer making an impulse purchase before considering that they may have paid a lot of money for an unusable piece of virtual property.

Other times, a domain name may be a combination of a couple of words that perfectly describe your business. I get emails all the time offering to sell me domains like "AtlantaLitigationAttorney.com" or "GeorgiaTrademarkAttorney.com." Many of these domain names have been scooped up and packaged by domain brokers hoping to turn a quick profit.  Of course, while using a domain like this might help to drive web traffic to your business (since they do contain common search terms), it will do little to help you brand your business—who would want to be called "Internet Search Engine" when they could be called "Google," "Bing," or "Yahoo"? When developing a name for your business, product, or service, remember that the strongest brands are usually those that come to associate your products and services with a unique set of qualities, not just to describe or name those products. Consumers think of Bud Light, Nike, or Chanel, for example, as a complete identity, even a set of lifestyle choices, not just the name of a product or company.

So I can’t register a descriptive name as a trademark?

Well, sometimes you can. But unless you have already been using and have become widely and exclusively known by a descriptive mark for at least five years, even if there were nothing preventing you from registering such a name, you still won’t be able to claim exclusive rights nationwide to a "merely descriptive" name simply through local use and federal trademark registration. "California Juice Co," and "Saratoga Juice Bar," for example, have both registered successfully on the Supplemental Register, a secondary trademark list for "merely descriptive" marks and which provides some, though not all, of the protections of the Principal Register.

While the Supplemental Register is sometimes seen as a stepping stone to later registration on the Principal Register, there are drawbacks to putting all of your marketing eggs into a basket you don’t yet fully own.  For example, it can be difficult to prove infringement of a mark registered on the Supplemental Register. Why? Because infringement occurs when there is a likelihood that consumers will be confused as to the source of goods or services uniquely identified under a particular mark, and registration on the Supplemental Register is by its very nature an admission that the mark is not strong enough to uniquely identify (and it therefore merely describes) the products or services in question or their source… and "mere description" is not something you can protect.

Of course, there are plenty of well-known marks that began life on the Supplemental Register and then moved on: "Five Hour Energy Drink" and "Chapstick," for example. Such marks may be re-registered in the Principal Register in five years if they have come to identify the product or service exclusively in the marketplace and have thus achieved what trademark law calls "secondary meaning"; i.e., a unique brand identification in addition to the self-evident, descriptive meaning.

How can I create a unique trademark and describe my product at the same time?

Many companies bridge the gap between completely unique marks (which take a lot of energy and marketing expenditure to associate the mark with the product or service) and "merely descriptive" marks by opting for something of a hybrid. "Tiger Energy Drink," "Longhorn Consulting Co.," "Falcon Performance Products," and "Frozen Pints Craft Beer Ice Cream" are all registered marks which are highly descriptive but have arbitrary and therefore "unique" elements grafted onto the descriptive portion of the mark to create a mark that is much more easily registrable and yet still describes the product.

Working with an experienced trademark attorney at Briskin, Cross & Sanford can help you to identify the likelihood that your proposed brand can be successfully registered as a trademark and, since the Trademark Office may take a year or more ultimately to reject an application for a mark that is not registrable, can save you a great deal of time and money as you seek to launch a successful company, product, or marketing campaign.