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How can I overcome the "merely descriptive" refusal from the USPTO?

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Written by Jan Buza

Co-founder of Trama

Overcoming a merely descriptive refusal of your trademark application can be challenging, but it's not impossible. Some common strategies include:

  • Proving the mark has acquired distinctiveness through use in the market, for example, by submitting consumer surveys.
  • Proving the mark has a secondary meaning or interpretation created by an incongruity, pun, wordplay, etc.
  • Proving the mark is suggestive rather than descriptive. Netflix is an example of a suggestive mark - implying streaming movies (flicks) through the internet but not outwardly saying it.
  • Amending the application to the Supplemental Register instead. If the mark acquires distinctiveness in the future, you can attempt to move it to the Principal Register.

Executing the strategies mentioned above may include formulating a strong legal argument backed by additional evidence. Therefore, if you received a merely descriptive refusal for your application, it's highly advisable to seek the help of a trademark attorney.

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