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There is Hope for Descriptive Trademarks

Has the United States Patent and Trademark Office (“USPTO”) rejected your trademark application and deemed it “merely descriptive?” If so, there are options other than appeal to the USPTO’s Trademark Trial and Appeal Board or complete abandonment of your trademark or service mark application.

Depending upon the extent and length of time of your company’s use of the mark, you could provide evidence that the mark has acquired “secondary meaning,” which is sometimes referred to as “acquired distinctiveness.” That would entitle your trademark to registration on the Principal Register even though your trademark, on its face, might be merely descriptive. Factors which are considered in proving secondary meaning are: 1) the monetary amount spent promoting or advertising the product or service under the mark; 2) the length of time the mark was used; 3) the monetary amount of sales of products or services bearing the mark; and 4) any evidence of consumer recognition of the mark such as a survey, or industry reports.

If this effort is unsuccessful, you still have options. The USPTO provides a separate Register for descriptive marks. It is called the “Supplemental Register.” In other words, descriptive marks can obtain a registration on this Supplemental Register until the owner of the trademark can show that it is no longer “merely descriptive” among relevant consumers. Five years of registration on the Supplemental Register generally creates a presumption of “secondary meaning” and, at such time, registration on the Principal Register may be available.

The benefits of a Supplemental Register Registration are that the filing date of the application is used for purposes of determining priority of use among users of the trademark, even though secondary meaning and actual registration on the Principal Register occurs years later. You might be able to obtain registration on the Supplemental Register until such time where you are able to prove that your mark has acquired “secondary meaning.” Registration on the Supplemental Register will also help to prevent others from obtaining registrations of similar marks in connection with similar goods who might be deterred by a the Supplemental Registration when a trademark search is performed.

The skilled trademark attorneys at the law firm of Santucci Priore, P.L. can assist you in proving secondary meaning or acquired distinctiveness, seeking registrations on both the Principal Register and the Supplemental Register, responding to USPTO Official Office Actions, amending trademark applications, appealing final refusals of trademark applications, filing international trademark applications, litigating validity and infringement issues before the USPTO’s Trademark Trial and Appeal Board, the U.S. Court of Appeals for the Federal Circuit and various federal and state courts, and domain name disputes before WIPO and other international bodies.

By: Michael Santucci, Santucci Priore, P.L., Managing Partner