A trademark opposition may be filed based on one of several grounds. This includes that the mark is merely descriptive and should be refused registration pursuant to Section 2(e)(1) of the Trademark Act.
A trademark is assessed on a continuum of legal strength. The strongest trademarks (and thus most eligible for trademark protection) are arbitrary or fanciful. This is usually a coined-term that has no relation to the goods or services. Suggestive trademarks are next; like arbitrary marks, suggestive trademarks are considered to be distinctive and therefore registrable. Suggestive trademarks generally require some imagination on behalf of the consumers in discerning the goods or services for which the mark is applied. In contrast to arbitrary and suggestive trademarks are merely descriptive trademarks. Lastly, are generic trademarks, which can never be registered under any circumstances.
Merely Descriptive Trademarks. A mark is “merely descriptive” within the meaning of § 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods and/or services. TMEP §1209.01. A major policy reason for not granting protection to merely descriptive trademarks is to prevent any one party by having a monopoly right to a phrase or term that can be used by others. Whether a mark is descriptive is assessed in relation to the goods or services for which it is applied. Therefore, a mark may be merely descriptive (and thus not registrable) for use with certain goods but not for others. For example, APPLE would be merely descriptive of pies and baked goods, but not for computers. The former use would be unregistrable as a trademark; the latter is an arbitrary and strong mark as used by the famous company of the same name.
Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable. A visual representation that consists merely of an illustration of the goods, or an important feature of characteristic of the goods is merely descriptive under Section 2(e)(1). Similarly, when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.
How to Oppose a merely descriptive trademark. A trademark opposition to prevent a trademark from registering under Section 2(e)(1) can be initiated by an Opposer. At a minimum, the Opposer must plead that it has standing to contest the trademark application and that the applied for mark is merely descriptive. The Opposer has the burden of proving by a preponderance of the evidence that the Applicant’s mark is merely descriptive and should be refused registration. Evidence is often established through dictionary definitions, trade usages, testimony, and other publicly available materials that would support a Section 2(e)(1) claim. Note that an Applicant in a trademark opposition may also bring a counterclaim against an Opposer on the same grounds that are being alleged against it.
Client advisory: If you are considering opposing a trademark application of a third-party, or you a trademark opposition has been filed against your application on the grounds of mere descriptiveness, you may contact the author to discuss options available to you.