Distinctiveness of Descriptive Trademarks – Judicial Perspective

In trademark law, a descriptive trademark is one that directly describes an ingredient, quality, characteristic, or feature of the product or service it represents. While descriptive marks may initially lack the inherent distinctiveness required for trademark protection, they can still be eligible for protection if they acquire secondary meaning—i.e., if the public has come to associate the mark with a specific source due to its use over time.

Judicial rulings and court precedents have played a pivotal role in shaping the understanding of distinctiveness for descriptive marks, particularly in cases where an applicant seeks to overcome the inherent limitations of descriptiveness.

Types of Descriptive Marks

Descriptive marks fall into several categories, including:

1. Generic Terms: Marks that refer to the general category or class of products (e.g., "Bicycle" for bicycles).
2. Merely Descriptive Marks: Marks that describe a feature, quality, or characteristic of the goods or services (e.g., "Tasty" for food products).
3. Suggestive Marks: Marks that hint at a characteristic but require some imagination or thought (e.g., "Coppertone" for sunscreen).

Under trademark law, the distinctiveness of a mark is one of the key factors in determining its eligibility for protection under the Lanham Act in the U.S. or similar laws in other jurisdictions.

Key Judicial Doctrines on Descriptive Trademarks

1. Inherently Descriptive Marks and Secondary Meaning

Descriptive marks are generally not eligible for federal registration unless they have acquired secondary meaning. This means that the public has come to recognize the mark as identifying the source of the goods or services, rather than merely describing them.

• Secondary Meaning: This is a concept that allows a descriptive mark to overcome its inherent lack of distinctiveness. Courts look at whether the public identifies the mark with a particular source, typically requiring evidence such as sales volume, advertising expenditures, consumer surveys, and length of time in use.
• Case Example: In In re McDonald's Corp. (1997), the USPTO initially rejected the trademark application for “Mc” used with food products because it was deemed too descriptive. However, McDonald's was able to show that the public had come to recognize "Mc" as identifying their specific chain of restaurants, resulting in the mark being granted protection.

2. Court Considerations for Distinctiveness of Descriptive Marks

When determining the distinctiveness of a descriptive mark, courts generally evaluate several factors:

• Length of Use: How long the mark has been in use in commerce. The longer the use, the more likely the public will recognize the mark as a source indicator.
• Volume of Sales: High sales volume and significant market share can indicate that a mark has achieved recognition in the marketplace.
• Extent of Advertising: The amount of advertising and promotional activity can contribute to a mark acquiring secondary meaning.
• Consumer Surveys: Courts may look at consumer survey evidence to determine whether the public associates the mark with a particular source rather than just a description.
• Exclusivity of Use: Whether the applicant has used the mark exclusively or whether others in the industry also use similar descriptive terms.

3. The Spectrum of Distinctiveness

Trademark law classifies marks along a spectrum of distinctiveness ranging from generic to arbitrary or fanciful. Descriptive marks are positioned in the middle of this spectrum, with more distinctive marks being eligible for protection.

• Generic Marks: These cannot be registered as they are common terms for goods or services and do not serve as identifiers of source.
• Descriptive Marks: Descriptive marks can be protected if they acquire secondary meaning.
• Suggestive, Arbitrary, and Fanciful Marks: These are inherently distinctive and do not need to acquire secondary meaning to be protected.

4. "Use as a Mark" Requirement

Courts have held that even if a term is descriptive on its face, it can still function as a trademark if it is used in a way that indicates the source of goods or services. This means that the manner in which the mark is used can affect whether it is perceived as merely descriptive or as a distinctive source identifier.

• Case Example: In In re Benjamin Moore & Co. (2005), the USPTO rejected the mark “ANTIQUE MIST” for paint as being merely descriptive. However, the company showed extensive marketing and consumer recognition, leading to the eventual recognition of the mark as distinctive due to secondary meaning.

5. The “Merely Descriptive” Standard

A descriptive term may be eligible for trademark protection if it meets the threshold of acquired distinctiveness. This principle, emphasized by the courts, applies specifically to marks that:

• Directly describe an aspect of the product (such as its quality, color, function, etc.),
• Have been used in a way that overcomes the descriptive nature and identifies a single source.
• Case Example: In Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000), the Supreme Court considered whether a product design (in this case, a distinctive checkered pattern) was sufficiently distinctive to be protected. The Court ruled that product designs must either be inherently distinctive or have acquired secondary meaning, even if they are merely descriptive.

6. Challenges to Descriptive Marks in Infringement Cases

In trademark infringement cases, the defendant can argue that the plaintiff's mark is merely descriptive and thus not entitled to protection. Even if the mark has been registered, the plaintiff must still prove that the mark has secondary meaning and is not simply descriptive.

• Case Example: In Thermo-Disc, Inc. v. Schneider Electric USA, Inc. (2015), the court ruled that the trademark “ThermoDisc” was descriptive because it directly referred to a type of product. However, because the company showed that the term had become associated with their specific products, the court upheld the validity of the trademark.

Important Court Decisions on Distinctiveness and Descriptive Marks

1. In re Merck & Co., Inc. (1980)

• Case Summary: The USPTO refused registration of the mark "EASY-READ" for a drug packaging design, arguing that it was merely descriptive of the product's packaging design.
• Judicial Outcome: The court held that secondary meaning must be demonstrated for descriptive marks to be protected, emphasizing the importance of showing that the mark has come to identify the product source in the minds of consumers.

2. In re The Bell Helicopter Co. (1995)

• Case Summary: The USPTO refused to register “BELL” for helicopters, claiming the term was merely descriptive.
• Judicial Outcome: The court ruled in favor of Bell Helicopter, holding that the mark had acquired distinctiveness over the years, given the long-standing association of the mark with their products.

3. In re American Eagle Outfitters (1996)

• Case Summary: The USPTO refused to register the mark "AMERICAN EAGLE" for clothing, finding it to be merely descriptive.
• Judicial Outcome: The Federal Circuit held that the mark "AMERICAN EAGLE" had acquired distinctiveness through extensive use and promotion, even though it was initially descriptive. As such, the mark was ultimately registered.

Conclusion

The distinctiveness of a descriptive trademark is a nuanced issue in trademark law. While descriptive marks are generally not eligible for protection until they acquire secondary meaning, courts have provided a pathway for such marks to gain legal recognition if they become closely associated with a specific source in the minds of consumers.

Judicial decisions consistently emphasize the importance of secondary meaning in establishing distinctiveness for descriptive marks. To achieve protection, applicants must present evidence such as consumer surveys, sales data, and marketing efforts that show the public identifies the mark as a source indicator. Courts balance the need to protect consumer interests and market clarity with the rights of trademark holders, ensuring that only those marks that genuinely serve to identify the source of goods or services are granted full protection under the law.