{3:30 minutes to read} The more distinctive a trademark is, the broader and stronger rights the owner will have in that trademark. But not every company chooses a distinctive name. Oftentimes businesses want the company name to describe what the company does so that consumers viewing the name will have an immediate understanding of the nature or a feature of a product or service. So for example, Salty as the name of a salty snack product.
A name that describes a feature of the products or services being sold is often only entitled to limited trademark protection. Owners of such trademarks may have difficulty stopping others from using a similar trademark unless it’s nearly identical to the owner’s trademark and is used with identical or highly related goods or services. This is true even if the owner is able to obtain a registration for its descriptive trademark. But that’s not to say it isn’t important to register that “weak” trademark with the US Patent and Trademark Office (PTO).
Why do descriptive names have limited protection?
One of the important purposes of trademark laws are to protect consumers when they are making purchasing decisions. Consumers need to be confident that when they make a purchase based on a brand name, the product or service they are purchasing is coming from the brand that they expect. It would be confusing, for example, to have a GAP clothing company and a GAP STYLE clothing company. Consumers might buy from GAP STYLE thinking that the GAP and GAP STYLE products come from a single source.
At the same time, the law is not meant to place unreasonable restraints on trade. For instance, it would be improper to allow someone to register the wording COMPUTER STORE and prevent competitors from being able to use the wording COMPUTER STORE as part of their branding.
If descriptive names are only entitled to limited protection, why bother registering them as trademarks?
If you do decide to use a descriptive name, registration can be important for several reasons:
1. Third-Party Trademark Applications
Once you’ve registered your descriptive trademark (there are strategies for obtaining a registration for weak trademarks, including registration on the Supplemental Register (versus the Principal) Register), the registration will likely block others from registering nearly identical trademarks in connection with substantially similar products or services.
2. Enforceability
Descriptive trademarks are only entitled to very limited protection, but a trademark registration can still be an important tool for stopping others from using the trademark. Depending on how a third party is using your trademark, a demand letter from an attorney, enclosing a copy of your registration certificate, can be an effective tool for stopping infringement quickly.
3. Peace of Mind
Having a trademark registration in place for your descriptive trademark can give you some assurances that a third party won’t later try to stop you from continuing to use your trademark. A trademark registration isn’t a bulletproof shield, but it’s better to have one than not to have anything at all.
4. Acquired Distinctiveness
Even if you have to settle for registration on the Supplemental Register, once you’ve used your trademark for at least five years, you may be eligible to register your trademark on the Principal Register. This trademark application will include with the claim that based on the five years of use, the trademark has acquired sufficient distinctiveness to be registered on the Principal Register. Having a registration on the Supplemental Register in the meantime could increase your chances of later successfully making this claim.
For all the reasons above, registration can be important even for the weakest trademarks. If you have any questions about your trademark, please feel free to reach out to us at info@trademark-counsel.com.
Kelly Weiner
Trademark Counsel
Law Office of Kelly Weiner PLLC
175 Varick Street, Fl 6
New York, New York 10014
(E) info@kellyweinerlaw.com
(P) 212.360.2307