Descriptive Trademarks
This morning, I had a call with a client about a new business they’re launching. The concept is great but one thing they will need to work on is the name of the new business. Why? Because it leans heavily on a descriptive trademark—and that’s a problem.
If you’re launching a business or product, understanding the pitfalls of descriptive trademarks is crucial. Let’s break it down.
What is a Descriptive Trademark?
A descriptive trademark is one that directly describes a product or service. Think “Delicious Donuts” for a donut shop or “Competent Accountants” for a CPA firm. While these names tell you exactly what’s being offered, they don’t do much to set the brand apart from competitors.
In the world of trademarks, these terms are considered weak because they lack distinctiveness. And distinctiveness is the foundation of trademark protection.
The Problem with Descriptive Trademarks
Why is descriptiveness an issue? Trademark law is designed to protect unique brand identities, not generic descriptions of goods or services. A descriptive trademark struggles to:
1. Stand Out. If your name is generic or obvious, it doesn’t distinguish your business in the marketplace.
2. Secure Registration. Government trademark offices, like the USPTO in the United States, often reject applications for descriptive trademarks. They want to avoid granting monopolies on everyday language that competitors might also need to use.
Overcoming the Descriptive Hurdle
If your heart is set on a descriptive trademark, don’t lose hope. One of the following strategies might work for you.
1. Acquire Secondary Meaning. A descriptive trademark can gain legal protection if it becomes strongly associated with your business over time. For example, Holiday Inn started as a descriptive term but became so recognizable that it evolved into a strong brand.
2. Choose a Suggestive Mark. A suggestive trademark hints at your product or service without outright describing it. For instance, Coppertone evokes the idea of sun-kissed, golden skin but doesn’t directly state its purpose. Suggestive marks are inherently stronger and easier to protect.
A Real-World Example: Apple
Take Apple as an example of a terrific trademark. The name doesn’t describe computers or phones—it’s unexpected and unique. That distinctiveness makes it a powerhouse trademark. Compare that to a hypothetical name like “Fast Computers”—it’s descriptive, dull, and hard to protect.
The Takeaway: Distinctiveness is Key
When naming your business, it’s important that you choose a distinctive trademark that sets your brand apart. A strong, unique name can help secure your reputation and ensure valuable legal protection for your intellectual property. By understanding the nuances of trademark law, you can avoid common pitfalls and make informed decisions.
Unsure about the strength of your trademark? It’s always a good idea to consult with a trademark attorney to get the trademark law advice you need.
