Descriptive Trademarks

The title here is a bit misleading as descriptiveadvertising or describing their own products"
words are not typically allowed to be registeredWhat this means: People should have the freedom
on the USPTO's trademark Principal Register. Let'sto use descriptive words in advertising or in
back up a little...describing their goods/services. Using the example
One of the main points (some would argue THEabove, other companies offering trademark
main point) of having a Federal trademark is toservices should be able to use the word
have exclusive rights to a name, a logo or a"trademark" to describe their services, in their
slogan within your industry. Given that, words thatadvertising, etc.
"merely describe" the goods or services are notSo How do I Know if my Name is Descriptive?
going to be allowed.As with anything trademark, it's never black
There are two main reasons the USPTO provides:& white. Each situation is going to vary from
1) "to prevent the owner of a mark fromthe next. The basic litmus test is "does this word
inhibiting competition in the sale of particulardescribe the product and/or service?" and if the
goods"answer is yes, then you've most likely got a
What this means: The owner of the descriptivedescriptive name on your hands.
word(s) can't trademark it as it could create aIt is not necessary that a term describe all of the
stranglehold, of sorts, on the word(s) within thepurposes, functions, characteristics, or features of
industry. For instance, the word "trademark" isa product/service to be considered merely
disclaimed on our Federal trademark registrationdescriptive; it is enough if the term describes one
on TradeMark Express, meaning we're notsignificant function, attribute, or property.
claiming exclusive rights to the word "trademark"Here are some examples provided by the
as it's a descriptive word for our industry.USPTO:o APPLE PIE held merely descriptive of
2) "to maintain freedom of the public to use thepotpourri (most likely because the words describe
language involved, thus avoiding the possibility ofthe scent)o BED & BREAKFAST REGISTRY
harassing infringement suits by the registrantheld merely descriptive of lodging reservations
against others who use the mark whenserviceso MALE-P.A.P.