A trademark or service mark is stronger and easier to protect if it is inherently distinctive, such as KODAK or XEROX.
However, most marketing folks gravitate toward more descriptive marks that are not inherently distinctive and, therefore, more difficult to register and protect. Some are “merely descriptive” and can’t serve as a trademark.
PURE APPLE for applesauce made from 100% apples would be merely descriptive of the product and could not serve as a trademark.
Oftentimes, the issue in a federal application for registration of a mark is not as black and white.
What happens when the trademark office refuses an application for descriptiveness? There are several options.
First, the mark may be abandoned and a more distinctive mark selected.
Second, evidence may be presented that the mark is suggestive but not merely descriptive. For example, the mark as a whole may have other connotations in customers’ minds than merely describing some aspect of the product or service.
Third, the Applicant may elect to publish the mark on the supplemental register, which sacrifices some of the benefits of a federal regisration:
- no nationwide constructive notice of the registrant’s ownership;
- no priority of use nationwide of the registered mark effective from the filing date of the federal application; and
- no evidentiary presumptions in Federal Courts.
However, the supplemental registration is not an admission of descriptiveness, and Applicant may elect to apply for registration on the principal register with proof of distinctiveness (ordinarily relying on a presumption after five years of continuous use).
Fourth, if the mark has already been used and acquired distinctiveness, then evidence of acquired distinctiveness may be provided to overcome the refusal.
Fifth, Applicant may appeal the refusal to the Trademark Trial and Appeal Board, which is the most expensive and time consuming option. (It’s often not successful, either.)