Descriptive Trademarks 101: Everything You Need To Know

Descriptive Trademarks 101: Everything You Need To Know

‘Can’t I Name My Brand or Business Based On The Goods or Services I Am Selling?’

Choosing a trademark for your brand or business can be challenging for an individual or business who have yet to tread waters in trademark registration and protection. Conducting trademark searches to ensure a mark has yet to be registered or in use can be daunting to newcomers in this field. 

What Is a Descriptive Mark?

It is no surprise one of the most common questions faced by IP professionals is if the mark can merely be descriptive to keep things simple and straightforward, yet effective. When we speak of a descriptive mark, we refer to circumstances such as the following: Lee is a owner of a beverage company selling bottled kombucha drinks, and Lee chooses to sell his goods under the brand name, or mark, ‘Lee’s Kombucha’. 

Other examples might be useful for understanding descriptive marks. For example, Fiji Water for bottled water shipped from Fiji; American Airlines for an aviation company with origins tied to America. 

Perhaps the most important emphasis is that not all descriptive marks are made equal. A descriptive mark can range from highly descriptive to lowly descriptive. This can only be determined by assessing the mark in question in relation to its goods or services. If a mark describes the characteristic, function, quality, (ingredient and so on) of the goods or services, the mark will usually be considered as a descriptive mark. 

Advantages of Descriptive Marks

There is generally a strong inclination for individuals and businesses to use descriptive marks and for good reason. Consumers receive immediate information about the goods and services sold by the business. Descriptive marks are eye catching in a different way compared to distinctive marks in a way that allows consumers to gravitate towards the good or service they are in search of in a quicker fashion. Marks that are too distinctive might turn away potential customers if the mark is too confusing, or does not refer in any way whatsoever to the good or service sold by the business. There is a chance consumers might glaze over businesses using distinctive marks in favour of businesses using descriptive marks if the consumer decides to expend less energy into researching brands for the desired good or service. 

Unfortunately, although descriptive marks serve as free and easy advertising for a business who chooses to use them, there are several disadvantages to using descriptive marks such as the following:

Disadvantages of Descriptive Marks 

Time, Cost and Effort Expended on Trademark Registration Increases

To register and obtain legal protection over a descriptive trademark is a markedly difficult process. It is common for the descriptive trademark to be refused registration initially by the respective governing body, in the case of Malaysia, the Malaysia Intellectual Property Office (MyIPO), based on the grounds that the mark is a mere description of the good or service in question. 

In response to this, the applicant must submit substantial reason to convince the governing body that the mark is not a merely descriptive mark. The applicant may appeal and re-appeal to the governing body should the proposed reason be rejected. As one may infer from the above, the registration process for a descriptive mark can be lengthy, laborious and most importantly, costly to the applicant. The applicant must consider the gravity of importance of the descriptive mark to his or her business prior to submitting an application and they must also take into account that the descriptive mark in question may never be approved for registration. 

Be Prepared for Trademark Infringements and Legal Disputes

Let’s use our previous example of ‘Lee’s Kombucha’ to make a case against descriptive marks here. Should Lee be successful in registering his mark as ‘Lee’s Kombucha’, congratulations! Let us imagine Lee’s business as a successful one that has gained considerable reputation in his locality and field. Should a competitor decide to ride on Lee’s coattails and register his or her kombucha business to rival Lee’s under ‘[Name]’s Kombucha’, it is no doubt Lee will have a difficult time enforcing his mark, such as convincing the relevant governing body that the word ‘Kombucha’ belongs to him as an intellectual property right.

For the reasons that ‘Kombucha’ is merely descriptive, and therefore a weak mark, Lee will not be able to make a strong argument for his case. Lee must demonstrate to the governing body that ‘Lee’s Kombucha’ has developed a secondary meaning. Furthermore, we must consider that Lee could have avoided a potential (and very common) phenomenon whereby a competitor takes on the same or similar name, brand or mark to benefit from someone else’s success in the first place by registering a distinctive, not descriptive mark instead. In short, descriptive marks are at risk of being exploited by third parties, and should the owner take the third party to court, one can assume that the dispute will be a lengthy, expensive and cumbersome one. 

Descriptive Marks May Not Stand Out In the Market to Consumers

Although descriptive marks can relay information regarding your good or service instantaneously to consumers, they also risk being forgettable due to the common or descriptive nature of the mark. Consumers may or may not remember your brand, and you may not stand out in the sea of competitors selling your class of goods or service should other competitors too, use the same or similar descriptive mark to describe their goods or service.

Take the example of ‘Lee’s Kombucha’ should his competitor set up a beverage business named ‘Leanne’s Kombucha’. Both Lee and Leanne risk consumers confusing their products with one another, and as a result both Lee and Leanne will find it hard to establish a dependable, consistent consumer base should the consumers conflate the two brands with one another. Examples of distinctive marks are as follows: Muji, NARS, Starbucks.

The examples given have other meanings associated with them and these companies have built a distinctive brand whereby consumers can easily associate the relevant establishment should the brand be mentioned. 

Business owners must consider both the advantages and disadvantages of using a descriptive mark seriously before registering his or her trademark to avoid the unnecessary time, effort and money wasted on the registration process should the mark be rejected as a result. 

Take the right steps to register your trademark successfully. Don’t know where to begin? Quality Oracle Group have 28 years of professional Intellectual Property experience in trademark protection, registration and portfolio management. Let us help you take the next important step today. 

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