So you’ve just been told that you may not be able to register your trademark because it is “descriptive.” What does that even mean? It’s my mark, why am I not allowed to register it?

The best place to start is with a quick overview of trademarks. A trademark can be classified into five different categories based on their distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. Generic marks lack the means of identifying the source of a particular good, and therefore cannot be protected as a trademark (e.g. trying to trademark the name “PEN” for selling pens). Moving up the list, you encounter suggestive (e.g. SPEEDIBAKE for frozen dough), arbitrary (e.g. APPLE for computers), and fanciful (e.g. CLOROX for bleach) marks. These three types are considered inherently distinctive and can be registered as a trademark assuming there isn’t a confusingly similar trademark already out there (you’re going to have a tough time getting a trademark for Florox, sorry).

Wait, but you skipped over descriptive marks! Don’t worry: a descriptive mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” Descriptive marks are considered the weakest of protectable marks. But they can still be registered as long as a descriptive mark is capable of identifying the source of the goods or services. Some descriptive marks have a secondary meaning and can be registered right away, while others might have to be in use long enough for the public to develop an association with the mark and identify it with a specific product or service.

The United States Patent and Trademark Office (USPTO) maintains two registers for trademarks. The first is the Principal Register – this is the best of the best. If you’ve been using a descriptive trademark for at least five consecutive years, you can try to get that trademark on the Principal Register by arguing the mark has a secondary meaning or “acquired distinctiveness.” A good example is Bank of America – the name is descriptive in nature (if you were new to the world, it would probably sound like it could describe any bank that was in America), but it has been around so long that it has acquired distinctiveness; everyone knows which bank it refers to.  

The other register the USPTO maintains is the Supplemental Register. If you are unable to get a descriptive mark on the Principal Register, you can register it on the Supplemental Register.  The USPTO maintains this second register for trademarks that are capable of distinguishing an applicant’s goods or services, but currently don’t distinguish them enough to warrant registration on the Principal Register.  If a descriptive mark has been in use for less than five years and does not have sufficient evidence to show acquired distinctiveness, it can only be registered on the Supplemental Register.  

While the Supplemental Register doesn’t offer all the same protections as the Principal Register, pursuing a trademark registration here is still worthwhile and will afford your mark at least some of the important perks that marks on the Principal Register receive, such as:

  • Nationwide notice to third parties;
  • Permission to use the registered trademark symbol (®);
  • It may allow you to object to future trademark applications for similar marks based on the likelihood of confusion with your mark; and
  • The option to bring an action concerning the mark in the federal court.

However, you do lose some advantages by only being on the Supplemental Register as opposed to the Principal Register, including:

  • You don’t have a presumption of ownership, validity or exclusivity of the mark;
  • You can’t record the mark the with U.S. Customs to prevent importation of infringing goods;
  • The mark doesn’t become incontestable;
  • You do not benefit from a constructive use date (i.e. you cannot rely on an earlier filing date); and
  • The mark isn’t published for opposition.

While this certainly isn’t an ideal scenario for someone looking to register their mark, it is usually the best course of action for a mark that is denied principal registration due to its descriptiveness. After all, if that mark later gains recognition, you can apply again to get it registered on the Principal Register.