What happens if I receive a "merely descriptive" refusal?

Photo of Tomas Orsula

Written by Tomas Orsula

Senior Trademark Attorney

If you receive a refusal due to your trademark being merely descriptive, the registration process will be paused until you successfully address the issue or the time for submitting a response runs out.

To overcome this type of refusal, first, it's essential to go through the office action and understand its contents. The best course of action depends on the examining attorney's reasons for dismissal, but generally speaking, the most common ways of addressing a merely descriptive refusal include:

  • Proving the mark is not merely descriptive of the goods or services offered but suggestive,
  • Proving the mark has acquired distinctiveness through use in commerce,
  • Proving the mark has a secondary layer of interpretation going beyond mere description of the goods and services (such as created by a pun or incongruity).

If you are not sure how to choose the best strategy for your case or how to execute it, it's best to talk to a trademark attorney who can write a compelling response on your behalf.

If you manage to overcome the merely descriptive office action and there are no other unresolved issues, your registration should resume.

Advice icon

Haven't found what you are looking for?

Our team of experienced trademark attorneys is here to help you! Simply send us an email outlining your request and we'll be happy to assist you.