Thursday, May 19, 2016

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Here, and here, and here. But applicants continue to filing merely descriptive trademarks (typically without the help of an attorney).

What is wrong with a merely descriptive trademark? For one, Section 2(e)(1) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering such a mark. Also, since the mark is compromised of a descriptive term that many others are probably using, it often fails to distinguish one's goods or services in the marketplace.

What is considered a merely descriptive? A mark 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).
Take a look at the trademark above. A federal application for this mark was filed by an individual in Florida on May 14th. The related goods are in Class 029 for "uncooked hamburger patties."

Is this trademark merely descriptive of "uncooked hamburger patties"? I think so. It certainly describes an ingredient and quality of the underlying goods. The fact that this mark is compromised of a design element in addition to descriptive words does not change this analysis. See TMEP 1209.03(f) ("...when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.").

Unfortunately for the applicant, this means the Trademark Office will probably issue an Office Action refusing to register his mark because it is merely descriptive and his $325 filing fee is lost.

Note - the applicant could have opted for a TEAS Plus application and a $225 filing fee but instead opted for a TEAS Regular application for an unknown reason.

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