I have received an office action with "mere descriptiveness" as the reason for dismissal. What should I do?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

If you received a merely descriptive refusal, it means the USPTO's examiner considers your mark to be merely descriptive of your goods and services. There is no one-size-fits-all resolution to this issue, but most commonly, the applicant may try to prove that the mark possesses a sufficient level of distinctiveness to be registered, either by:

  • having earned enough recognizability in the market already,
  • having a secondary meaning,
  • including a unique element lending enough distinctiveness to the mark as a whole or
  • being suggestive rather than descriptive.

If all of these fail or can't be applied, the applicant may choose to amend the application to the Supplemental Register or abandon the application and retry with a different mark after adding a distinct element.

If you are not sure how to approach the refusal of your trademark application, seeking the help of a trademark attorney is highly advisable.

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