Trademark Registration of Descriptive Marks

Contrary to popular belief, not all trademarks are created equal. Some types of trademarks, such as those that consist of coined words or phrases, are traditionally considered to be the strongest kinds of trademarks since they are powerful indicators of the source of the goods or services being offered under them. Examples of strong trademarks include Google®, Kodak®, and Orbitz®, all of which are completely made up words that have nothing to do with search engine services, photography products, or travel arrangement services.

On the the other hand, trademarks which consist entirely of descriptive words or phrases are considered weak trademarks since they do not tend to identify any particular company. For example, the name "Boston Flower Shop" would be very descriptive because the name merely describes the purpose of the business: to sell flowers in Boston. And no doubt there are many Boston flower shops.

In order to get a trademark registration for a descriptive trademark, one would have to establish "acquired distinctiveness," which is just a fancy way of saying that people in the marketplace now see the mark as identifying a particular company or manufacturer, instead of the product or service itself. One way to established "acquired distinctiveness" is through 5 years' substantially exclusive use of the name in question. Therefore, if the "Boston Flower Shop" company has been in business with that name for at least 5 years, and if they are the only flower shop to be using that name, then getting a federal trademark registration could be well within reach.

As a side note, it is important to keep in mind that there are many successful companies which have thrived on their descriptive trade names, including Bank of America®, Coca-Cola® and New York Life Insurance Company®. Although these companies had merely descriptive trademarks initially, they were all eventually able to establish that their trademarks had acquired distinctiveness through long and substantially exclusive use of those names.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com