Descriptive Trademarks Offer Narrow Scope of Protection
The use of descriptive marks often sparks disagreement between corporate marketing and legal departments
Michael T. Smith for Inside Counsel
Descriptive words or phrases are conceptually weak trademarks that are difficult to enforce. A descriptive mark conveys or describes a characteristic or feature of the goods or services with which it is used. To be protectable as a trademark, a descriptive term or phrase must acquire distinctiveness or “secondary meaning,” i.e., a meaning separate and apart from its primary descriptive meaning, through use of the mark in commerce. On the other hand, suggestive, arbitrary and fanciful marks are inherently distinctive and protectable as trademarks without a showing of secondary meaning. This latter group of marks is conceptually strong and entitled to a broader scope of protection.