Trademark Applications - Merely Descriptive

Not all "trademarks" are actually trademarks. If you're thinking about a series of downloadable  albums of music, don't apply for "Really Sensational Jams". If you're opening a new honky tonk on Lower Broadway in Nashville, don't call your attorney about "Beer & Burgers on Broadway" as your name brand. It might compete with Dierks Bentley, Luke Bryan, and Kid Rock. But it won't earn you a registration certificate from the United States Patent and Trademark Office ("USPTO").

It is always a tough role to be a "buzz kill" when a creative client calls regarding a name or brand with wild enthusiasm. Of course, they don't understand the law and trademark application process. That is why they're calling you. And they don't want you to merely tell them what they want to hear. 

But they also don't want to hear that their latest, greatest name may not register. Applying for a trademark in 2018 and beyond is a federal process. State trademark registrations exist. They are inexpensive. They don't require an attorney. They are easy to obtain. But they aren't worth much in this global world of marketing and business that we live in. 

So call an attorney who is seasoned in the process and who knows how to obtain a federal registration. Set aside a minimum of six months of time to receive that registration and the "circle R" if you decide to apply. And keep in mind that merely descriptive marks or phrases do not register.

In short, trademarks/service marks distinguish certain goods or services as yours. You are the source of the goods/services. The mark sets such goods/services apart from those of others. You are required to specifically indicate the goods/services on your application, choosing from formats published by the USPTO. 

But your mark cannot merely describe what you are selling. A mark is merely descriptive and will not register "if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." The potential for descriptiveness must be evaluated in relation to such goods or services, the context of the use, and the significance the term would have to the average purchaser.

Rules of law often have exceptions, and a descriptive mark can register if it has obtained "secondary meaning" or "acquired distinctiveness" where it serves a function of identifying a particular source of goods or services.  

So, in short, go for "Ole Red" if you're Blake Shelton. But forget "Beer & Burgers on Broadway".

Case citation: In re The Chamber of Commerce of The United States of America, 675 F.3d 1297, 1300 (Fed. Cir. 2012)