Descriptive words or phrases are conceptually weak trademarks that are difficult to enforce. A descriptive mark conveys or describes a characteristic or feature of the goods or services with which it is used. To be protectable as a trademark, a descriptive term or phrase must acquire distinctiveness or “secondary meaning,” i.e., a meaning separate and apart from its primary descriptive meaning, through use of the mark in commerce. On the other hand, suggestive, arbitrary and fanciful marks are inherently distinctive and protectable as trademarks without a showing of secondary meaning. This latter group of marks is conceptually strong and entitled to a broader scope of protection.
The use of descriptive marks is fertile ground for disagreement between corporate marketing and legal departments. Marketing desires to use trademarks to convey information about goods or services to potential consumers. From a legal standpoint, however, the purpose of a trademark is to identify the source or origin of goods or services. As a result, the legal department is faced with the task of repeatedly discouraging the use of descriptive terms or phrases because of the difficulty in registering descriptive marks and the difficulty of enforcing them.
Two recent decisions of the Trademark Trial and Appeal Board (TTAB) reinforce the trepidation with which legal proceeds when it either disapproves use of a descriptive mark or reluctantly signs off on the use of a descriptive term as a trademark.
In the first case, The Chamber of Commerce of the United States of America sought to cancel the United States Hispanic Chamber of Commerce’s mark United States Hispanic Chamber of Commerce (plus design) because of a likelihood of confusion with the mark U.S. Chamber of Commerce. The Chamber of Commerce of the United States of America v. United States Hispanic Chamber of Commerce. The parties’ services and trade channels were found to be related and the U.S. Chamber’s mark to have attained a degree of fame. Despite those findings, which often are a precursor to a finding of likelihood of confusion, the TTAB denied the petition to cancel the Hispanic Chamber’s registration because the U.S. Chamber’s mark was highly descriptive and weak, and thus entitled to a narrow scope of protection.
In the second case, Otter Products LLC v. BaseOneLabs LLC, Otter Products owned a Supplemental Registration for the mark “Impact Series” for use with cell phone protective cases. Otter’s mark was on the Supplemental Register because the mark is merely descriptive of a characteristic or feature of Otter’s cell phone cases. As a result of being on the Supplemental Register, Otter enjoyed none of the evidentiary presumptions it otherwise would have had with a Principal Registration, namely, a presumption of ownership, validity, and the exclusive right to use the mark.
Absent any evidentiary presumptions, Otter had the burden of proving it had proprietary rights in the mark upon which it relied to establish likelihood of confusion. Otter relied solely on its Supplemental Registration and failed to submit evidence that its descriptive mark acquired distinctiveness and thus functioned as a valid trademark. Otter’s Opposition to BaseOneLabs’ application to register “Impactband” for goods related to Otter’s was denied. A Supplemental Registration is evidence of nothing other than that a registration issued. Evidence of acquired distinctiveness must be submitted to rely on a Supplemental Registration as a basis of opposing a third party’s application to register a mark.
Descriptive terms should be used as trademarks sparingly. When a descriptive term is used as a trademark, it should be with the understanding that the mark is weak conceptually and absent significant efforts to strengthen the mark through use in commerce, it will be entitled to a narrow scope of protection. The end result likely will be an inability to prevent competitors, which have the same marketing tendencies to use descriptive terms for their goods and services, from using similar marks on related goods.
