Intellectual Property Attorney

The Potential Pitfalls Of Adopting A Descriptive Trademark

It can be very appealing to adopt a trademark that describes the product or service being marketed. However, descriptive trademarks bring with them significant pitfalls.

The purpose of a trademark is to identify the source of origin of the goods or services. In order to serve this identifying function, the trademark must be capable of differentiating the source of these goods from the source of other similar (or even identical) goods. A descriptive term is incapable of differentiating because all it does is describe the goods or services themselves. In legal parlance, it is not inherently distinctive. Before a descriptive term can function as a trademark, it must acquire distinctiveness through extensive, exclusive use in connection with those goods and services.

A descriptive term that has not yet acquired the necessary distinctiveness is not protectable to the same extent as an inherently distinctive trademark (Clorox or Quasar, for example). Descriptive trademarks cannot be registered on the Principal Register of the U.S. Patent and Trademark Office. The Principal Register is reserved for distinctive trademarks. The U.S. Patent and Trademark Office does maintain a separate Register, the Supplemental Register, for descriptive trademarks. However, registration on the Supplemental Register does not afford the same protections that registration on the Principal Register does.

Plaintiff in a recent case before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board found this out the hard way. In Otter Products LLC v. BaseOneLabs LLC, Opposition No. 91200510 (December 18, 2012) [precedential], Otter Products had registered the trademark IMPACT SERIES for “protective cases for interactive, handheld electronic devices, namely, portable music players, portable video players, phones and computers” on the Supplemental Register, presumably because the term “impact” describes the protective function of its cases. When BaseOneLabs LLC applied to register the trademark IMPACTBAND for “cell phone and handheld computing device covers,” Otter Products opposed the applied-for trademark alleging that it was likely to cause confusion with Otter Products’ trademark.

During Otter Products’ testimony period, it submitted its Supplemental Register registration alone. Defendant, BaseOneLabs moved to dismiss the opposition proceeding on the ground that Otter Products had not produced any evidence of a right to relief. Trademark Rule 2.132(b) provides that where an opposer relies only on Office records, an applicant “may, without waiving its right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the plaintiff has shown no right to relief.” See TBMP § 534.03. The question before the Board was “whether Opposer’s Supplemental Register Registration is sufficient to ‘make out a prima facie case.'”
Otter Products, at 4. In other words, is a registration on the Supplemental Register alone enough to support Otter Products’ allegations, thus placing the burden on BaseOneLabs to refute them. The Board held that it was not. “Because the mark in Opposer’s Supplemental Register Registration is presumed to be merely descriptive, and opposer has introduced no evidence of use of its mark sufficient to prove that its alleged mark has acquired distinctiveness, it cannot prevail based solely on its ownership of this registration.”
Otter Products, at 7. Plaintiff’s opposition was dismissed with prejudice.

Before adopting a descriptive trademark, it is important to consult with an experienced trademark attorney to assess your options for protection and enforcement.

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