The main strategies for overcoming a Section 2(e)(1) refusal are arguing that the mark is not merely descriptive, or demonstrating acquired distinctiveness.
Arguing the mark is not merely descriptive: if the mark requires imagination, thought, or inference to connect it to the goods or services; rather than directly describing them; it is suggestive rather than descriptive and is registrable. This argument works best where the mark has multiple meanings or where the connection to the goods is indirect.
Demonstrating acquired distinctiveness: if the mark has been in long and exclusive commercial use and consumers have come to associate it with a single source, submit evidence of that association. Evidence includes sales figures, advertising expenditure, length of use, consumer surveys, and third-party recognition.
Amending to the Supplemental Register: if the mark is descriptive but has not yet acquired distinctiveness, it can be registered on the Supplemental Register. This provides some limited benefits while the mark builds its commercial reputation toward Principal Register eligibility.
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