It’s an interesting paradox that some poor choices as trademarks can be closely related to excellent marks. Probably the #1 reason we give negative opinions on trademark searches, and the #1 reason for trademark rejections by the trademark office, is that the proposed mark is descriptive.
A descriptive mark, or as the trademark office likes to call them, marks that are “merely” descriptive, are marks that “merely” describe the goods and services. Because they are descriptors of the kind of the goods, they can’t serve as identifiers of the source of the goods. Therefore, they can’t act as trademarks or service marks, because the purpose of marks is to assure the public of the provider of the goods, not the nature of the goods themselves.
Descriptive marks are popular with trademark applicants because they are looking for a way of having their mark call to mind the items they are selling. They’re looking for the mark to tie their goods so tightly to their name that the buying public will see the two as inseparable as possible. It’s a logical idea, on a certain level, but it won’t work. If the trademark office allowed descriptive marks, then the first person to come up with a certain description of the goods would own the exclusive rights to that description. There are only so many ways to describe goods, and eventually, it would become difficult for new entrants in the business to find a way to tell the public what they’re selling. Descriptive marks are often easy to spot with a little bit of thought – marks (like these taken from the internet) such as FAST BAUD (for fast modems) or 104 KEY (the number of keys on a keyboard). Others can be more difficult, and sometimes even an experienced trademark attorney will have trouble predicting with certainty how the trademark office will react.
The paradox is – some of the best marks are suggestive marks. Those can be hard to precisely define, because while they don’t describe the goods or services precisely, they have a tendency to indirectly suggest the goods. Examples may be better than definition. MICROSOFT for software (think “software for a micro-computer”), GREYHOUND for bus lines (think “speedy”), CHICKEN OF THE SEA (think, “light meat, but comes from the ocean”) Good suggestive marks can be powerful, for once the consumer makes the association, the mark is almost as good as a descriptive mark. However, unlike descriptive marks, suggestive marks will be allowed by the trademark office. A good trademark lawyer will be able to give your guidance as to whether your proposed mark is likely to fall on the spectrum of descriptive to suggestive, and help put your business in the best possible position.
In the next article, we’ll talk about an interesting end-around strategy for descriptive marks.