Difference Between “Descriptiveness” And “Suggestiveness” In Trademark Law: Hard To Describe

The trademark law in the U.S. and elsewhere generally prohibits the registration of trademarks that are “merely descriptive” of the goods or services sold under the mark. There is a longstanding rule that trademark rights, i.e., rights to exclusive use in the marketplace, accrue to the first user only if the mark is “distinctive,” and therefore mere descriptions of products should remain available for anyone to use with their goods. For example, if I am selling “Habañero-flavored Sausage Links” and a competitor wants to enter that market, the law will not make it impossible for her to accurately describe her goods as “habañero-flavored sausage links” just because I happened to describe my goods that way and sold them in the sausage marketplace before she did.

It would be a totally different situation if I labeled my sausage products nondescriptively as, e.g., “Azure Empire” links. In this case, “Azure Empire” would be very distinctive in relation to my product because it is an arbitrary phrase that has no readily discernible connection to sausage or peppery flavor.

The trademark law recognizes that there is a category of “suggestive” marks that falls between the “merely descriptive” (generally unprotected) and the “arbitrary” (protected). For example, I could try selling my sausage links using the mark “Saw-Sees.” With a little effort and input by the consumer, my “Saw-Sees” mark might convey the concept of sausage products and the concept of a “saucy” or outlandish flavor but the concept of peppery sausage links is not explicit. The mark “Saw-Sees” is therefore suggestive of a quality of the goods involved (the sausages are peppery or “saucy”) but it is necessary to understand the mark phonetically, exercise a little imagination, and make a connection to sausage products before someone seeing it for the first time would know what my product is.

A recent decision of the Trademark Trial and Appeal Board of the USPTO (the TTAB) illustrated the descriptiveness rule. The Trademark Office refused an application for the mark BRODDCAST used with “multimedia software for digital video recording, editing, and playback.” Reversing the refusal, the TTAB said that the relevant question is the significance that the mark would have to an average purchaser in the marketplace for the goods. Although an individual using the applicant’s software would have the ability to subsequently broadcast the video created using the BRODDCAST product, the evidence did not show that the applicant’s product was used to actually accomplish the “broadcast.” Therefore the mark BRODDCAST did not furnish the consumer with “a concept of nature of the goods being offered” just by reading it. “To the extent that subsequent broadcasting of the videos created with [the BRODDCAST software] is intended to occur, imagination or additional thought is required to reach that conclusion.”

The case is In re: Fuel Industries, Serial No. 86185707 (U.SP.T.O. Trademark Trial and Appeal Board, March 18, 2016.)

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