Friday, April 8, 2011
Life afer a "merely descriptive" initial refusal
Trademark applications are sometimes met with an initial refusal by the trademark examining attorney as being "merely descriptive". This category of potential trademarks is rejected because if tells something about the product. For example, "Adhesive Tape" is descriptive and would not be permitted as trademark (it might be rejected as generic as well"). Recently, when faced with an initial rejection, on descriptiveness grounds, we were able to satisfy the examining attorney by assembling evidence that the proposed trademark had acquired secondary meaning and that the target audience for the trademark associated our client with the mark to the substantial exclusion of others. We did this through thorough research on the internet and other sources. Sometimes, you can't meet the burden of proving secondary meaning. If the trademark is in acutal use, you can amend to the Supplemental Register. While this brings fewer rights, it can provide a path to eventual registration on the Principal Register.