When are Terms Merely Descriptive? Part 1 of 2

Posted by on Aug 20, 2013

We have previously discussed trademark issues with descriptive terms.  To recap, terms that are merely descriptive receive the least amount of trademark protection.  A descriptive term, such as “Fish-Fry” generally does not qualify for protection unless the term has acquired some form of secondary meaning in the perception of the relevant consumer base in the relevant market for the product.

Today, we address an even more basic question – what are some of the grounds for a mark to fall into the dreaded “merely distinctive” category?  And are there any ways out?  We will focus on four major areas, which are: foreign words, personal names, acronyms, and geographic words.  Each area presents its own unique challenges and implications as we examine this robust, evolving, and highly relevant area of the law.

Foreign Words

What if a mark is a word, phrase, or term in a foreign language?  How do we assess whether or not this mark may be descriptive?  And does it matter if the mark is descriptive in the non English language?

The first step in this analysis is a close look at the guidelines issued by the United States Patent and Trademark Office (USPTO).  One such guideline is known as the Doctrine of Foreign Equivalents.

The doctrine asks this fundamental question: when should the foreign wording in a mark be considered the same (equivalent) to the literal English translation of the mark?

Recall that if translated into English, the mark could very well not be protectable as “merely descriptive” or even likely to cause confusion with an existing mark – the USPTO cites the example of “LUPO” which means “Wolf” in Italian; since both LUPO and the existing “Wolf” mark were both in the clothing business, the USPTO decided that the LUPO mark was not protectable.

The doctrine has evolved into more of a guideline than a set-in-stone rule, causing no end of confusion and uneven application.  The major factor seems to be whether a member of the consuming public would “stop and translate” the term into English.  If yes, the USPTO should favor applying the doctrine.  If no, the USPTO should disfavor application of the doctrine.

Thus, “La Posada” is not a mere descriptive mark, because it is unlikely the average consumer would stop and translate the term into its English meaning of “Inn.”

Personal Names

Personal names have sort of been lumped together with descriptive marks.  Marks like “Smith’s Scissors” have generally been held by courts and the USPTO to require acquired secondary meaning before they are eligible to obtain or receive trademark protection.  This comports quite well with the overarching policy of the Lanham Act and its sensitivity to language – personal names are part of the sphere reserved to the public – after all individuals have a great deal of interest in being able to use their own names without restriction.  However, when certain names become so famous or associated with the product in the minds of the public, they can take on secondary meaning and be eligible for protection.

One important question remains.  Let us imagine that a business successfully protects a proper name via a showing of secondary meaning – does that prevent other people with the same name from using their own name to endorse their own products?  If so, how does that possibly make any sense?

The Basile decision sheds some light on the issue.  Although in the past there was thought to be an absolute right to use one’s own name in business, the modern trend has weakened that right.  Currently, the legal system generally prevents people from using such a name (that someone else has registered with secondary meaning) as all or part of the primary mark!  Instead, the name, which must include both first and last name(s) can only be shown or used in a “subsidiary” capacity.  This means if someone else has registered “Smith’s Scissors” I would most likely not be able to register “Smith’s Cutting Implements” as a mark.  I could, to comply with the trend, devise a mark along the lines of “Cut-Rite Scissors – created by John Smith.”