IP: Descriptive trademarks offer narrow scope of protection

The use of descriptive marks often sparks disagreement between corporate marketing and legal departments

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.

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Michael Smith

Michael T. Smith is of counsel at Birch Stewart Kolasch & Birch. He has practiced in the intellectual property field since 2001, focusing his practice...

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