Is Your Mark Adequately Descriptive?

When you are trying to determine whether your trademark is merely descriptive and likely to be refused by the U.S. Patent & Trademark Office (USPTO), you must evaluate it in relation to the goods or services, not in the abstract. In other words, what potential significance will the mark have to the consumer of your goods or services? Will the consumer be likely to confuse it with other similar goods or services?

• The fact that you were the first (or only) user of the descriptive term does not warrant registration of the term as a trademark if it is used in a descriptive manner.
• If your trademark includes an image or illustration that features the goods or services to be provided, the Examiner will likely find it to be merely descriptive.
• Using a foreign word that translates as a descriptive word in English will not get you around it being rejected as merely descriptive. The reasoning is that words from other languages are often translated into English to determine descriptiveness.
• If your mark is an acronym and the working it stands for is merely descriptive of the goods or services, your trademark application will be refused. In other words, an acronym that is commonly understood by a consumer to mean the same as the wording it represents can be merely descriptive.
• A mark that identifies the provider or the group of buyers of the goods or services is likely to be merely descriptive.
• A laudatory term claiming the excellence of the goods or services is generally considered to be merely descriptive. This includes words like “best, “premier” or “ultimate.’