A strong trademark can be a tremendous asset to a business. Trademarks are generally categorized as fanciful, arbitrary, suggestive, descriptive, or generic, from strongest to weakest. Descriptive marks fall on the weaker end of the spectrum but can be valuable when used after careful consideration of the risks and benefits.

When selecting a trademark, one that conveys information about the product or service being offered to the public may seem like a good option. However, marks that are descriptive are considered weak and difficult to protect and enforce because competitors may need to, and can, use the wording to describe their product or service. It is important for businesses to balance the need for a trademark to convey a clear message to the consumer with the need for proper trademark protection.

What is a Descriptive Mark?

A descriptive mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the products or services offered in relation to the mark. For example, ICED COFFEE may be a descriptive mark for cold coffee beverages. While the descriptive nature of this mark for coffee may appear obvious, this is not always the case. The mark APPLE PIE was found merely descriptive for potpourri because it described the scent of the potpourri. It is important to consider the nature of the product or service in detail and how it may relate to the trademark.

A merely descriptive mark may not be eligible for federal trademark registration on the Principal Trademark Register. However, it may be eligible for registration on the Supplemental Trademark Register, which affords some but not all of the benefits of a Principal registration.

After several years of continuous use of a descriptive mark, it may acquire distinctiveness and be eligible for a Principal registration. While enjoying all of these benefits from a descriptive mark may take some time, a descriptive mark does have the opportunity to become as valuable an asset as a non-descriptive mark.

The Benefits of Having a Descriptive Trademark

A descriptive trademark is great at clearly communicating to customers a product or service, reducing marketing costs, and increasing visibility and brand recognition.

A customer passing by a restaurant named Healthy Salad Shop would immediately recognize what foods are offered in the restaurant. While Mario’s Restaurant down the street may also offer healthy salads, this would not be immediately conveyed without marketing efforts. Someone searching online for a restaurant that offers healthy salads may search “healthy salads” and be taken to Healthy Salad Shop’s website as a close match.

After long-term use of Healthy Salad Shop, the mark has the ability to become strongly associated with the restaurant and its offering of healthy salads. Healthy Salad Shop’s brand recognition would increase over time and may acquire distinctiveness, shifting it from a weak mark to one that is strong.

How to Balance Marketing Needs With Trademark Rights

A descriptive mark can be a double-edged sword. A descriptive mark can clearly communicate your product or service, increase visibility, and offer marketing advantages. However, it has limited trademark protection and enforceability, at least when it is first adopted. Investing in a plan to build up the mark’s acquired distinctiveness over time may provide a valuable return.

When the adoption of a descriptive mark is considered, it should be with an understanding that the full scope of rights to a descriptive mark may not be realized until the mark has been used for a period of time and acquired distinctiveness. During that time, any investment in the mark may be risky because enforcement against third-party uses of the mark may be limited.

Consult With a Seasoned Trademark Lawyer to Protect Your Business

If you are considering adopting a descriptive trademark, it is important to fully understand all the benefits and risks. Consulting with an experienced Intellectual Property law attorney can be helpful in developing a plan to adopt a trademark that minimizes risks and maximizes potential.