Understanding the Spectrum of Trademark Distinctiveness
Business names fall along a “spectrum of distinctiveness” that affects trademark registration eligibility. The more unique a name, the stronger its eligibility for federal trademark protection. A Livonia trademark attorney can help you determine where your brand falls on this spectrum before you file.
Fanciful Marks: The Easiest to Register
Fanciful marks are invented words created only to serve as trademarks. Examples include Kodak and Exxon. These words have no meaning outside their trademark use, making them the easiest to register with the USPTO.
Arbitrary Marks: Real Words, New Meaning
Arbitrary marks use real words that do not describe the product or service. Apple Computers is a famous example. Apples have nothing to do with computers, making the mark arbitrary and highly protectable.
Suggestive Marks: Imagination Required
Suggestive marks hint at a product or service without directly describing it. Netflix and Airbus are strong examples of suggestive marks. Consumers must use imagination to connect the mark to the goods or services, giving these marks better chances of registration.
Descriptive Marks: The Risk Zone
Descriptive marks directly describe a feature, purpose, or quality of the goods or services. For example, “Red Basketballs” simply describes red-colored basketballs. Marks like these often face a trademark descriptiveness refusal because they fail to distinguish the product from others in the market.
Trademark Descriptiveness Refusal and Office Actions
When the USPTO believes a trademark is merely descriptive, it issues a trademark descriptiveness refusal. This refusal arrives in the form of an Office Action issued by the trademark examiner. Some Office Actions require only minor corrections, but descriptiveness refusals demand a formal legal response. You must act quickly and strategically to protect your trademark application.
How a Livonia Trademark Attorney Can Help
If you receive a trademark descriptiveness refusal, you have only six months to respond before your application is abandoned. A Livonia trademark attorney can draft a strong and persuasive response to the Office Action. Hiring an experienced attorney increases your chances of overcoming the refusal and securing your trademark rights.
Why Trademark Descriptiveness Refusals Happen
The USPTO examiner must only show that the mark immediately conveys an idea about the product or service. The examiner does not have to prove that others are using the same term. They also do not need to show that the term describes every feature of your product. Overcoming a descriptiveness refusal requires skilled legal argumentation based on these standards.
Avoid Trademark Descriptiveness Refusals
Working with a knowledgeable Livonia trademark attorney before filing your application can help avoid many common pitfalls. A proper trademark search, good strategy, and strong application materials will save you time, money, and effort in the long run.
Work with Noble Path Legal PLLC
Noble Path Legal PLLC is a boutique trademark law firm based in Metro Detroit. We specialize in trademark registration, trademark renewal, and responses to Office Action refusals, including trademark descriptiveness refusals. Our Livonia trademark attorney offers virtual consultations and premium service to protect your brand.
Click the “Register Your Trademark” button below to start your trademark registration journey today.