A Section 2(e)(1) Refusal that your trademark is merely descriptive is a relatively common Refusal.  

Before we discuss this Refusal, we need to briefly review the 5 categories of trademarks: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.

Three of these categories can always be registered: Suggestive, Arbitrary, and Fanciful.  And Generic marks?  Can never be registered.  And descriptive marks have the potential to be registered. 

Okay, let’s go through examples to better understand that.

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We’ll start with Generic Trademarks

Suppose I am selling candy, and I want my trademark to be CANDY.  This won’t be acceptable as a trademark because CANDY is just the commonly understood name of what I’m selling.  

The reason generic trademarks can never be registered has to do with the purpose of trademarks.  We register trademarks to prevent other companies from profiting off our hard-earned brands and customer loyalty.  It wouldn’t make sense to allow people to register for generic trademarks because everyone in the candy industry needs to be able to use words, like candy, in advertising materials. 

The second category is descriptive trademarks. 

If you received a Section 2(e)(1) Refusal, the USPTO believes that your trademark describes an ingredient, quality, characteristic, function, feature, purpose, or use of what I’m selling.  So, let’s say I’m selling candy, and I want my trademark to be SUGAR.  This would be a descriptive mark, because sugar is an ingredient in candy. 

Descriptive trademarks are unlikely to get registered on the Principal Register because they merely describe what you’re selling.

The remaining categories can all be registered on the Principal Register:

The third category is suggestive trademarks.‍

Suggestive trademarks HINT at what you’re selling, but doesn’t actually describe what you’re selling.

Another way to think of suggestive trademarks is that they take some imagination for consumers to understand what you’re selling.  An example of a suggestive trademark for candy is ALMOND JOY.  These words hint at what you might be selling, like candy, but it takes some imagination to get there.

The fourth category is arbitrary trademarks.

This is a trademark that may have a common understanding for another product or service, but doesn’t relate to what you’re selling.  

An example of an arbitrary mark is BOAT for selling candy.  BOAT would be generic if you’re selling boats, but has no meaning in relation to candy.  

And finally, the fifth category is fanciful trademarks.  The best way to think about these trademarks is that they have no meaning.  An example of this would be KAMAKI for candy.  Since KAMAKI is a made-up word and has no meaning in any language, it is considered fanciful.  And, because fanciful trademarks are so unique, they are entitled to the strongest level of protection against possible infringers. 

So, a 2(e)(1) Refusal is saying that your trademark fits into the second category. 

So, how do you respond to a Section 2(e)(1) Refusal?

The first approach is to argue against the merely descriptive refusal. 

Here, you could argue that your trademark does NOT merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of what you’re selling.  Instead, you could argue that your trademark fits into the suggestive category. 

As you will remember, suggestive trademarks require some imagination for consumers to understand what you’re selling.  These trademarks hint at what you might be selling, like candy, but it takes some imagination to get there.

Your Office Action likely has attachments of examples of dictionary evidence, or evidence of newsletters or companies using the wording of your trademark in a descriptive way.

In response, you could try to find evidence that shows your trademark being used in a distinctive way that does NOT merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of what you’re selling. 

Ask yourself: Do the words have an additional meaning?  If so, you could argue that there is another meaning to the words that the public would readily understand. 

Evidence can take the form of searching the word or words of your trademark in an online dictionary.   

In addition, if there is an absence of or no definitions for the word or words, you could use that as evidence that your mark is not merely descriptive.  After all, if the words of your trademark are not even in the dictionary, it is difficult to imagine consumers knowing that these words merely describe your goods and services! 

Here, if you search KAMAKI, you’ll see that there are no results found on dictionary.com.

Another argument is if your trademark is a double entendre. 

What that means is that your trademark has two different meanings.  For instance, consider the trademark SUGAR & SPICE for bakery goods. 

Sugar and spice are both ingredients used in baking, but consumers would also associate this phrase with the nursery rhyme: “super and spice and everything nice”.  So, since one of these meanings from the nursing rhyme was NOT descriptive of bakery goods, the trademark is no longer merely descriptive.  

Unfortunately, it is often difficult to overcome a Section 2(e)(1) Refusal if the Office Action has a strong case that your trademark is merely descriptive.  

The second approach is to accept this Refusal.  

Take a step back and read the Office Action, and see if you agree with the trademark examining attorney’s decision.  

If you do, what happens in that case?  

Well, if your mark is merely descriptive, and is NOT generic, then there are two ways you can still register your trademark. 

The first way is amending your application to the Supplemental Register.

Applicants are immediately eligible for the Supplemental if they are already selling their goods or services.  Or, they can register to the Supplemental Register at a later time, once they show proof that they are selling their goods or services.  For more information on amending to the Supplemental Register, and the benefits of the Supplemental Register, look at the Supplemental Register video in the Trademarks Classroom. 

Remember, though, that generic trademarks can never be registered on any Register. 

The second way is to make a claim or argue that your trademark has “acquired distinctiveness” under Section 2(f) of the Trademark Act.  

Well, what does that mean?  

Generally, applicants can argue that their trademarks have “acquired distinctiveness” when they have prior federal trademark registrations with the same trademark for similar goods and services, they’ve used their trademark for five years in commerce, or if they provide actual evidence of acquiring distinctiveness.  For a Section 2(e)(1) Refusal, especially when the trademark is highly descriptive, you’ll likely have to provide actual evidence that your trademark has acquired distinctiveness.

For more information on “acquired distinctiveness” claims, you can review the Section 2(f) Acquired Distinctiveness video in the Trademarks Classroom, which goes over the types of actual evidence required for Section 2(f) Acquired Distinctiveness.