Things To Do If Trademark Registration Gets Rejected Due To Merely Descriptive Mark

Your Trademark registration application may get rejected for several reasons. Close to the top of the list of possible trademark rejections is mere descriptiveness. Fair rivalry is the primary reason why descriptive marks are usually not registrable. The standard at work here is that competitors should be able to use specific words to sell their products. It would thus be unjust to give a trademark owner special rights to a descriptive mark which would hinder competition in the sale of definite services or goods.

Tips to avoid choosing a merely descriptive mark

Search the USPTO trademark database for applications filed for the similar mark. Pay specific attention to any trademark filings in your specific class of services or goods as a mark for one product may not be descriptive for a completely diverse product in a diverse class.

How hard is it to conquer a mere descriptiveness denial?

It is not simple to prevail over a mere descriptiveness rejection. Essentially, you have one shot to make your best quarrel. In case you do not influence the examining attorney in your response to a non-final Office Action, you have only some options remaining:

• Plea to the TTAB or Trademark Trial and Appeal Board or
• Based on new evidence file a Request for Reconsideration

The possibility of a flourishing petition over a mere descriptiveness denial is quite low.

Tips to dispute against a Section 2(e) rejection

If the mark has a minimum of two words, one possibly effective argument shows absurdity among the two words. Another approach is to show how the mark in fact does not communicate information about traits of the goods or services.

A mark will be denied as deceptively misdescriptive if

• the misrepresentation conveyed by the mark is plausible and
• the mark misdescribes an ingredient, quality, function, characteristic, purpose, feature, or use of the particular services or goods.

Appealing a Descriptiveness Refusal

A plea to a descriptiveness refusal can come as a reply to an Office Action, a Request for Reconsideration of a Final Office Action, or as a petition to the TTAB. A plea, particularly a petition to the TTAB, can be the most time-consuming and expensive way to act in response to a descriptiveness refusal, but, if winning, it has the maximum benefits. If a trademark owner is flourishing in overturning the descriptiveness refusal, it might get a listing on the main register as a unique trademark.

Usually, an Online Trademark Registration owner can select either of the other two options while its trademark application is still awaiting. Further along in the procedure, the more procedurally hard it can become to alter to the Supplemental Register or file proof of obtained uniqueness, but it can typically be done. If a trademark owner thinks that its trademark is not “merely” descriptive of its services and goods, it should strongly think about appealing the descriptiveness refusal.

There any several factors to consider when deciding the ideal way to deal with a descriptiveness refusal. If a TrademarkRegistration Service is actually descriptive, then offering evidence of acquired distinctiveness or amending to the supplemental might be the only way to gain any federal rights in the descriptive trademark.