IP Tech Knowledgy

Words that describe a product or service being offered can eventually be a protectable trademark for those items although, initially, descriptive terms are not protectable as trademarks. A trademark is descriptive if it relates to an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Surnames are also deemed descriptive. However, through usage in the marketplace, the law presumes that a mark whose primary meaning is descriptive can acquire distinctiveness in the minds of consumers and become a protectable trademark. This “Secondary Meaning” entitles the owner to stop others from using that term for similar goods and services based on the theory that the trademark then specifically identifies the owner’s offerings, rather than merely being a term that describes the nature of any general product and service in the marketplace. Descriptive terms similarly may not be entitled to full registration with the U.S. Patent and Trademark Office (PTO) until the owner can prove the mark has acquired distinctiveness and is not merely descriptive. Federal trademark law creates a presumption that after five years of continuous use, a mark is presumed to have attained the requisite acquired distinctiveness and has the secondary meaning sufficient to gain registration and to stop third-party usage that may then occur. In trademark applications, although the five-year usage is helpful, and sometimes sufficient to prove “acquired distinctiveness,” an applicant may need to provide evidence to the PTO that it has used the mark sufficiently, so that consumers indeed recognize the trademark as referring to that owner, rather than merely describing qualities of the goods and services being offered.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com