Overcoming Descriptiveness Refusals: Tips for Crafting Persuasive Responses to USPTO Office Actions

Introduction:

Trademarks fall on a spectrum with respect to their distinctiveness. On one end of the spectrum are generic terms. Generic terms do not have trademark significance. For example, a bag of salt that says “SALT” does not tell you where the salt came from. It simply tells you what is inside of the bag. On the other end of the spectrum are fanciful (i.e., made up) marks. KODAK, POLAROID, EXXON are examples of fanciful marks. Arbitrary marks are real words used in outside of their normal meaning (e.g., APPLE to identify computers, phone and other tech products that have nothing to do with produce and orchards). Descriptive trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. Over time, descriptive marks can serve as source identifiers. Lastly, there are suggestive marks, which are clever (e.g., COPPERTONE for sunscreen). Fanciful, arbitrary, and suggestive marks are inherently distinctive. Trademark examiners do not reject them on based on this quality.

However, trademark examiners reject trademark applications for marks that are descriptive. As discussed below, there are several ways an applicant might be able to address a descriptiveness refusal. For example, an applicant can sign a declaration and submit evidence that it has acquired secondary meaning. That is, over time and promotion, consumers now recognize the descriptive mark as identifying goods and services from the applicant. Clients often ask me for an example of a descriptive mark that has acquired secondary meaning. I use LUMBER LIQUIDATORS as an example. LUMBER LIQUIDATORS has been used to identify “retail and wholesale store services and distributorship services featuring hardwood flooring products” from LL Flooring, Inc.—and its predecessors—for more than thirty years. And almost anytime I watch a college basketball game, I watch a LUMBER LIQUIDATORS commercial. LL Flooring, Inc. owns a federal trademark registration for the mark LUMBER LIQUIDATORS, which contains a declaration of acquired secondary meaning. The idea is that now, consumers encounter LUMBER LIQUIDATORS in the marketplace and think of a single source, rather than a descriptive phrase.

One of the challenges that businesses face during the trademark registration process is overcoming descriptiveness refusals from the United States Patent and Trademark Office (USPTO). Descriptive terms or phrases that directly describe the goods or services offered by a business are generally ineligible for trademark protection. However, with a well-crafted response to the USPTO's office actions, it is possible to overcome descriptiveness refusals and obtain registration for your trademark. By preparing a thoughtful and well-planned response, you can strengthen your trademark application and increase the chances of securing valuable trademark protection.

Understanding Descriptiveness Refusals:

Descriptiveness refusals occur when the USPTO determines that a proposed trademark is descriptive of the goods or services associated with it. Such marks are considered weak and do not inherently distinguish a business from its competitors. The USPTO's primary concern is preventing the registration of marks that could hinder competition or limit consumer choice. Understanding the nature of descriptiveness refusals is crucial for effectively responding to office actions.

Crafting Persuasive Responses to Descriptiveness Refusals: Crafting a persuasive response to descriptiveness refusals is crucial for overcoming these challenges. Here are some tips to consider:

a. Analyze the Office Action: Thoroughly review the office action to understand the USPTO's concerns and requirements. Identify the specific issues that need to be addressed in your response.

b. Research and Gather Evidence: Conduct comprehensive research on the descriptiveness of your mark, including relevant case law, precedents, and USPTO rules. Gather evidence, such as consumer surveys, sales data, expert opinions, or industry recognition, to support your arguments.

c. Develop a Strong Legal Argument: Structure your response in a logical and organized manner, addressing each concern raised in the office action. Craft a persuasive legal argument supported by evidence, demonstrating why the mark is not merely descriptive and should be considered distinctive.

d. Showcase Acquired Distinctiveness: If the mark is determined to be descriptive, focus on establishing its acquired distinctiveness. Provide evidence of extensive use, advertising campaigns, media recognition, consumer testimonials, or other relevant factors that demonstrate the mark's secondary meaning. Depending on how long you have used the mark, you might be able to sign a declaration and move on.

e. Consider Amendments or Disclaimers: If appropriate, consider amending the mark or including a disclaimer for descriptive elements. This can help overcome the descriptiveness refusal and increase the chances of registration.

f. Seek Professional Assistance: Consulting with a trademark attorney experienced in responding to office actions can provide valuable guidance and expertise. An attorney can assist in crafting compelling arguments, navigating complex legal issues, and increasing the chances of a successful outcome.

Tips for Enhancing Your Response: To make your response even more effective, consider the following:

a. Clear and Concise Language: Use clear, concise, and persuasive language in your response. Avoid technical jargon and ensure your arguments are accessible to the examining attorney.

b. Organization and Structure: Organize your response in a logical and easy-to-follow structure. Use headings and subheadings to address each issue separately, making it easier for the examining attorney to review and understand your arguments.

c. Provide Supporting Evidence: Include relevant evidence to support your arguments. This may include consumer surveys, market research data, advertising materials, testimonials, or expert opinions. Ensure the evidence is credible, current, and directly supports your position.

d. Address Specific USPTO Concerns: Respond to each concern raised in the office action individually and comprehensively. Address how your mark is distinctive and why it is not merely descriptive of the goods or services.

e. Professional Tone: Maintain a professional and respectful tone throughout your response. Avoid using emotional language or confrontational remarks, as they can undermine the persuasiveness of your arguments.

Conclusion: Overcoming descriptiveness refusals requires careful analysis, strategic planning, and persuasive argumentation. By understanding the nature of descriptiveness refusals, identifying common challenges, and implementing effective response strategies, trademark applicants can increase their chances of obtaining a trademark registration. Remember to analyze the office action thoroughly, gather compelling evidence, develop strong legal arguments, and present a well-structured response. Seeking assistance from a trademark attorney can provide valuable support throughout the response process. With a well-crafted and persuasive response, you can successfully navigate descriptiveness refusals and secure the trademark protection your brand deserves.