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

Written by Jan Buza

Co-founder of Trama

The main strategies are arguing that the mark is suggestive rather than descriptive, demonstrating acquired distinctiveness, or amending to the Supplemental Register.

Suggestiveness: if the mark requires imagination, thought, or inference to connect it to the goods rather than directly describing them, it is suggestive and registrable. This argument works best where the connection between the mark and the goods is indirect or requires a mental leap.

Acquired distinctiveness: submit evidence that the mark has been in long and exclusive use and consumers now associate it with a single commercial source. Evidence includes sales figures, advertising expenditure, length of use, consumer surveys, and third-party recognition.

Supplemental Register: if the mark is descriptive but has some commercial recognition, it can be registered on the Supplemental Register while building toward Principal Register eligibility.

Start with a free assessment of your office action with Trama.

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