NATOLI-LEGAL, LLC
305 Broadway, 7TH Floor, New York, NY 10007
212-537-4436 / Toll-free 866-871-8655
Menu
Natoli Legal, LLC. The home of Lantern Legal Services.
NATOLI-LEGAL, LLC

Descriptive Trademarks




You have indicated that your proposed mark is a descriptive mark. Descriptive marks generally will not be registered by the United States Patent and Trademark Office. It would be unfair to your competitors if you had exclusivity over the use of words in the English dictionary that your competitors need to describe their goods or services. Like you, your competitors require those descriptive terms to effectively compete in the market. As such, the United State Patent and Trademark Office generally will not issue a registration for a descriptive mark.

Like many areas of law, however, there is an exception to the general rule that descriptive marks will not be registered by the United States Patent and Trademark Office. A descriptive trademark that has acquired "secondary meaning" (e.g., that the trademark has become recognized by the relevant consumer pool as a brand of specific goods and services from a single source) may gain protection and be registered by the United States Patent and Trademark Office.

For example, the Kentucky Fried Chicken trademark originally was found to be descriptive of its goods, namely, fried chicken, and the company could not register its trademark as such. Because Kentucky Fried Chicken has acquired secondary meaning over the years, and the consuming public readily recognizes and associates the trademark with a single source, it has acquired the necessary recognition to qualify for trademark registration. This is not to suggest that your mark must achieve a McDonald's or Kentucky Fried Chicken level of recognition to acquire secondary meaning. Your mark may be far less recognized than some of the international trademarks and nevertheless have sufficient consumer recognition to warrant federal trademark registration under the secondary meaning exception to the general rule of descriptive marks. However, the United States Patent and Trademark Office will not take your word for it - you will be required to prove that your proposed trademark has acquired the requisite level of recognition in the relevant market.

Your Options :

A proposed mark that is descriptive in some way of the goods or services offered in connection with the trademark may be registered if the trademark has acquired "secondary meaning" - or in other words, the trademark has become recognized by the relevant consumer pool as a brand of specific goods and services from a single source. If your trademark has acquired secondary meaning over a period of time, you may apply for federal registration of your trademark. You will be required to prove that your mark has acquired the necessary level of recognition.

The United States Patent and Trademark Office maintains a Supplemental Register, which is a secondary register of trademarks (the primary register is the Principal Register). Unlike registration on Principal Register, which has stringent registration requirements, registration on the Supplemental Register requires only that the mark be capable of distinguishing goods or services. If your proposed trademark is descriptive of the goods or services in connection with which it is used, your trademark may be eligible for registration on the Supplemental Register even though it will not be registerable on the Principal Register absent a showing of secondary meaning. Trademarks registered on the Supplemental Register do not carry the same level of strength and protection as those registered on the Principal Register.

Find out more about our Trademark package services