Can you trademark a descriptive term that describes the product or service?
General Rule-No.
To be refused registration on the Principal Register, a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.
Examples:
BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services
MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer
COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing
There is a two-part test used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public. The genus of the goods and/or services is often defined by an applicant’s identification of goods and/or services.
By Mat Grell, US Trademark Attorney
