Monday, April 11, 2016

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

In another perfect example of what not to do, a company in Washington D.C. filed a federal trademark application on April 6th for SNACKABLE GRANOLA. The related goods are listed as "Granola; Granola snacks; and Granola-based snack bars" in Class 030.
The problem? The trademark is merely descriptive of the underlying goods. Trademarks that are merely descriptive will be refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act. A trademark is merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b).

Certainly the phrase SNACKABLE GRANOLA describes an ingredient and characteristic of "granola snacks" and "granola-based snack bars." Even the specimen submitted with the application, seen above, shows the purported trademark in an area on the packaging that is more likely to describe the actual goods. While "Oh-Mazing!" could be considered a trademark, the phrase "snackable granola" simply indicates what is inside the package.

While there is an exception to the rule that merely descriptive trademarks cannot be registered on the Principal Register, that exception requires substantial, continuous, and exclusive use in commerce, which does not apply here (the first use date is listed as February 26, 2016). See TMEP 1212 for more on acquired distinctiveness. 

Unfortunately for this applicant, who did not use a trademark attorney, the $225 filing fee submitted with this trademark application is all but lost.

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