What do you want to name your business? Do you have a made-up word in mind, or would you rather go with something literal and traditional? When it comes to trademark law, this is actually a hugely significant decision. In this guide, we’ll talk about descriptive brands—one of the hardest types to trademark—and how you can make sure you stay protected even if your brand is well established with descriptive language or images.
Branding: What Does Your Business Identity Really Mean?
For business owners, it can be difficult to choose branding elements like the business name, product names, logos and other identifiers. It’s a big part of launching a new business or product/service: what to name it? How will you represent it visually in ads, on your website, or on product packaging? Getting this element right can set the tone for the health and success of your business.
However, no matter how valuable they may be as business assets (and they are!), trademark rights exist primarily for consumer protection. Trademarks “indicate the source of the goods.” In other words, they tell shoppers which company sells the products and services they see in stores and online. A shopper knows that the can of soda they're buying is COKE and not PEPSI because the brand tells them so right on the package with its logo and name.
In the same way, your brand can tell consumers which goods and services are yours and not your competitors. This is good not only so customers accurately report on their experiences with your business, but also so they know where the product or service came from if they want to come back for more. Marketing and sales rely heavily on distinctive branding for that reason. If COKE or PEPSI made ads for soda in general rather than ads for their own brand of soda, they might drive business to a competitor. Using your brand—your unique logo and business or product name—is an important part of distinguishing your goods from others.
Distinctiveness, or the quality of being identifiably unique, is an important concept to understand when it comes to creating a brand. But how does your brand distinguish your products or services?
Creating a Personalized Business Identity: Distinctive vs. Descriptive
In short, your brand distinguishes your products or services from your competitors by being different. Think about existing businesses. Some brands use completely made-up words, like VERIZON or EXXON. They’re so unusual or out-of-context (like APPLE for computers) that shoppers won’t see them anywhere else except on that particular company’s goods and services. These brands clearly define the companies behind the products, and they are called “inherently distinctive.”
But what if your trademark is made up of words commonly used to describe a general category of products or services, or where they come from? Words that can apply to many different businesses, like BANK, AIRLINES, FAST, HAWAII, used for closely connected goods, are called “descriptive.” Because they’re so widely applicable to different businesses, products, and services, they do not—on their own—tell the shopper about your company. Types of descriptive marks include:
Merely Descriptive: Words or designs that describe your goods (CREAMY for yogurt or STYLISH for clothes);
Laudatory: Words that describe an alleged superior quality of the goods (GREATEST OF ALL TIME for food, or THE ULTIMATE for beauty salon services);
Generic: Words or designs that are the common name of your goods (FLOWERS for floral arrangement or CLEANERS for dry cleaning services).
Geographically Descriptive: Words or designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
Business Type Designations: Wording that merely indicates information about the type or structure of your business ("CORPORATION," or "INC.," for a corporate entity, "BROS." or “AND SONS” for a family-owned business).
Informational: Words that merely provide information about your goods, services, or business(like net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established).
The issue with descriptive trademarks is that consumers may hear the brand name and not know it refers to a specific business. For example, a Portland-based pizza restaurant named PORTLAND PIZZA COMPANY, might make people think of any business that makes/serves pizza in Portland, rather than the specific pizzeria being discussed. You’d have to have actually heard of PORTLAND PIZZA COMPANY to know that it refers to a specific business rather than a category of similar businesses. That potential for confusion isn’t just an issue for marketing—it’s also a problem for the Trademark Office.
How to Acquire Distinctiveness & Successfully Trademark a Highly Descriptive Brand Name
To register PORTLAND PIZZA COMPANY on the Principal Register at the U.S. Patent and Trademark Office (USPTO), and to enforce that brand against competitors using the same or similar wording, the trademark must be said to have “acquired distinctiveness” or gained “secondary meaning.” Although PORTLAND PIZZA COMPANY is not “inherently” distinctive, if the owners of the pizzeria use the trademark long enough and publicly enough, and gain enough attention for the brand, it becomes distinctive and can be protected.
Although there are many legal elements that go into “secondary meaning,” brand owners can acquire distinctiveness in two primary ways:
Continuously using the brand for five or more years, such that the brand is now known to identify only the brand owner.
Getting enough attention for the brand, even over a shorter period of time, that you can submit evidence showing consumers recognize the mark as the brand owner’s.
For example, if PORTLAND PIZZA COMPANY has been operating in the city for decades, and has multiple locations across town, with highly recognizable advertisements, a strong presence on social media, and national media coverage, a person who hears “PORTLAND PIZZA COMPANY” would likely know immediately that those words refer to a specific business. Once the brand has become known in this way, it will be recognized as a distinctive trademark. You can then make what’s called a “Section 2(f) claim” to overcome the USPTO’s descriptiveness refusal.
Acquiring distinctiveness takes time and effort, often involving investment in advertising and other initiatives to ensure everyone knows that your brand name refers to your specific business. If you are just launching your business and are concerned that your brand is too descriptive to be registered as a trademark, you won’t be able to claim you’ve acquired distinctiveness just yet. If you haven’t yet made major investments in product packaging, marketing (including building a website and paying for ads) and can’t afford to do so, you should consider rebranding to a name that’s more distinctive. When you do this, refer to our article on the spectrum of distinctiveness and consider a brand that will be unique and easily identifiable as yours from the start.
But if you have already invested in your brand, received attention, and had success—especially if it’s more than five years old—you may be well on your way to acquiring distinctiveness. Registering your trademark on the Principal Register at the USPTO sends a message to competitors and investors that they should take your brand seriously, and shouldn’t try to edge in on your hard work and success by trying to associate themselves with your business name.
No matter where you are in this process, we can help make sure you’re setting yourself up for success in the long term. Reach out and let us know if we can help!
This blog was created & fact-checked by actual trademark attorneys from the IdeaLegal team. Click here to learn more about the intellectual property services our firm offers.