United States: The Future of Descriptive Marks: Is There Reason to Avoid Them?

Trademarks and service marks that describe the nature or qualities of products associated with them are often favored by marketing directors because they do not require great expenditures of marketing resources to form an immediate mental link in the minds of consumers between the mark and the product or its characteristics. The well-known downside to those marks, generally called "descriptive marks," is that they are more difficult to protect, especially initially, than "arbitrary" or "fanciful" marks such as Exxon® for petroleum products or Apple® for computers. These marks are considered inherently distinctive because they do not inherently inform the consumer about the nature or use of the product. Notwithstanding these difficulties, one need only consider marks such as Windows® or Holiday Inn® to recognize that some descriptive marks are very strong. This is because they have acquired distinctiveness in the marketplace such that consumers now associate the products identified by each mark with their particular source, thereby overcoming the hurdle that generally bars registration and protection of marks that are merely descriptive.

Some businesses have felt a heightened wariness to adopting descriptive marks in light of a recent United States Supreme Court decision, KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S.Ct. 542 (2004). In KP Permanent, the Court carved out room for an accused infringing user to claim the fair use defense even when there exists some likelihood of confusion between the descriptive mark and use of the descriptive term. In addition, difficulties involved in using the Madrid Protocol to protect marks may also act as a potential deterrent to non-U.S. entities to adopting descriptive marks. Nonetheless, there remain both sound business reasons to use descriptive marks and, as is discussed in this article, steps that can be taken to protect them even in the wake of KP Permanent and limitations of the Madrid Protocol.

In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., decided on December 8, 2004, the Supreme Court considered whether the registered trademark "Micro Colors" was infringed by a competitor’s use of the phrase "microcolor" or "micro color" to describe and market permanent cosmetic makeup. The competitor, KP Permanent Make-Up, defended claiming fair use of the mark under 15 U.S.C. § 1115(b)(4) because it claimed to use "microcolor" only in its ordinary descriptive sense and not as a trademark. The question before the Supreme Court was whether or not a party claiming the fair use defense must also show that there is no likelihood of confusion under 15 U.S.C. § 1114(1).

The Supreme Court held that because sections 1115(b)(4) and 1114(1) were drafted as independent provisions of the Code, a defense under one section does not require a showing under the other. Thus, if a party can assert the fair use defense, that party will not infringe even if there is some likelihood of confusion with the descriptive mark. The Supreme Court stated that the registrant can get protection only in the "penumbra or fringe" of secondary meaning associated with goods identified by the descriptive term. Id. at 550. Thus, some confusion can be tolerated with descriptive marks, and protection of a descriptive mark is qualified by the possibility of another party using the term only for its ordinary meaning.

While the case suggests that use of the mark can coexist with use of the same term for its ordinary descriptive meaning by another party, the Supreme Court explicitly left open the possibility that the extent of consumer confusion may be a factor in determining whether or not the term is "used fairly" under 15 U.S.C. §1115(b)(4). If the plaintiff can show that confusion is substantial, and consumers are being harmed by reliance on the term to indicate a particular source, the fair use defense may still fail. With this in mind, the Supreme Court suggested that commercial justification and the strength of the plaintiff’s mark might be additional considerations when determining the meaning of "used fairly."

The Supreme Court’s ruling in KP Permanent should not dissuade anyone from adopting a descriptive mark where marketing goals make it desirable. An owner of a descriptive trademark that has acquired secondary meaning (an association in the minds of consumers between the mark and a particular source) can still stop someone from using the term as a mark. Moreover, the Supreme Court clearly left room for lower courts to consider the degree of confusion caused by a fair use and the strength of the plaintiff’s mark in such a situation. Accordingly, a party adopting a descriptive mark should continue to do what should always have been done with descriptive marks: stake out its rights and build provable brand recognition as quickly as possible. To achieve these goals, businesses should consider the following concrete steps.

The owner of a descriptive mark should take care not to fall into the trap of using the same term in a manner that could be construed as merely descriptive. For example, a canner who uses the term "Juicy" as a mark for fruit products should not advertise " Juicy peaches are delicious." Advertising rather should emphasize that the term is being used as a brand or mark. For example, advertising that proclaims "Choose Juicy for the best quality peaches" or "Look for Juicy as your source of the most delicious peaches" not only builds brand recognition but can be important evidence in building an argument that the term has acquired secondary meaning.

When a term is used as a mark, declare that it is being used as a mark. This can be done simply by placing the well known "™" or "^SM" next to the mark, and placing a textual note that the term is a trademark of the owner.

A mark that is used to distinguish the applicant’s goods or services, but that is not registrable on the Principle Register by the United State Patent and Trademark Office because it is merely descriptive, may be registered on the Supplemental Register. Marks on the Supplemental Register are not subject to opposition and receive only some of the benefits available to marks registered on the Principle Register. These benefits of registration on the Supplemental Register include: 1) the mark owner can use the ® symbol next to the mark, thereby putting other would-be users of the mark on notice that the mark is already being used; 2) the mark will normally appear in trademark searches conducted by other parties and provide another avenue of notice; and 3) a mark registered on the Supplemental Register will have priority over other descriptive marks that are confusingly similar.

To the extent other users are deterred from using the mark, the owner of the supplemental registration has an opportunity to use the mark extensively with the aim of acquiring distinctiveness and secondary meaning. Once a mark acquires secondary meaning, the owner may petition to have it moved to the Principle Register where it will receive all the benefits of trademark protection. These benefits include a presumption of validity and ownership of the mark. Acquired distinctiveness is determined as a question of fact. The more descriptive the mark, the more evidence will be required to show that customers identify the mark with the source and not the product itself.

If the applicant owns prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application, the prior registrations are prima facie evidence that the mark is distinctive and used to identify the source. In other words, a company’s use of the term to indicate the source of all of its goods or services and not just those of which the term is descriptive is evidence that the mark identifies the source and not any one particular product of the company.

Substantially exclusive and continuous use of the mark in commerce for five years is also prima facie evidence that a mark has acquired secondary meaning. The applicant can submit a verified statement to this effect. In order to qualify, the mark must actually be used as a mark, and not just as language describing a quality of the product. Ensuring that the mark is used exclusively by the registrant may be difficult and will likely involve policing of the mark, discussed further below.

Consumer recognition of a mark as a brand indicator will only be achieved through targeted advertising designed to entrench in the mind of consumers that the particular term is associated with the goods or services from only one particular source. An applicant for a descriptive mark can submit actual evidence of advertising campaigns and their effect in order to show acquired distinctiveness. Such evidence may include affidavits, depositions, evidence of advertising expenditures, or letters or statements from the trade or public. Survey evidence, market research, and consumer reaction studies are generally most persuasive because they show that consumers actually recognize the term as an indicator of the source and not just as describing the product.

If at any time a trademark becomes used to identify the underlying product as opposed to its source, it may become generic as to a particular product or service and the mark will either be refused registration or its registration will become subject to cancellation. For example, because "aspirin" has become generic for pain relievers and "thermos" has become generic for vacuum bottles, neither are protected marks. Descriptive marks are more likely to become generic than arbitrary or coined marks because by definition they refer to the product they identify.

To avoid generic use, a trademark must be used as an adjective to describe the source of the product it identifies. Xerox® and Kleenex® have not become generic because their owners have taken care to use those marks in association with generic terms, namely photocopies and tissues respectively, and not as the generic name for the product itself. In cases where a mark is associated with a new type of product, owners should consider developing a separate name for the product that itself can be the generic name.

In order to develop secondary meaning associated with the source, the applicant for a descriptive mark should police the mark and respond to any misuse in order ensure that others avoid generic use of the mark. The applicant should monitor not only vendors of the product or service, but also media reporting. For example, the applicant should take steps to ensure that downstream vendors provide the particular product associated with the mark when explicitly requested and not an equivalent from a competitor. If a newspaper article uses the mark as a generic term, a letter should be written to the newspaper clarifying that the term is a mark and should not be used as the name of the product itself. Records of these enforcement activities should obviously be maintained.

Likewise, the applicant should monitor use of the mark by others and, where appropriate, respond with a suitable cease and desist letter. Acquiescence to another’s misuse of a mark can be fatal to the future enforceability of the mark.

The Madrid Protocol cannot be used to register a mark from another country directly on the Supplemental Register in the United States. Nor can the trademark owner convert an application onto the Supplemental Register in cases where a Madrid Protocol application is refused in the United States because of a descriptiveness objection. In such cases, however, the owner should, if the mark is important, consider filing a national application for the Supplemental Register for all of the reasons described above and take steps to build up the mark’s distinctiveness.

Despite questions raised about the reach of KP Permanent Make-Up, the case has not significantly altered the analysis for deciding whether to adopt a descriptive mark. And while the Madrid Protocol is of no help in securing protection for descriptive marks in the United States, alternative avenues that existed before the Madrid Protocol became effective in the United States remain viable alternatives for pursuing registration. When marketing goals are best served by use of a descriptive mark, recent developments have, at bottom, created no new hurdles.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.