When Terms are Merely Descriptive Part 2
Merely Descriptive Part 2 – Today we continue our discussion of certain interesting topics within the larger question of when certain terms are classified as merely descriptive. The classification of a term as a descriptive mark carries with it the consequence that the mark receives no protection whatsoever unless secondary meaning can be demonstrated.
We previously discussed the merits of foreign words and personal names as potential trademarks and concluded that they are subject to some special rules and tests by the USPTO and the judicial system. Today we continue our discussion with the examination of acronyms and geographic marks in ‘Merely Descriptive Part 2’.
Many brand owners face a form of catch-22 or paradox. They want to use common, easily understood words in the English language as part of their mark, yet they are told by their trademark attorneys that such words could very well be classified as ‘descriptive’ with the extensive laundry list of headaches that classification entails.
When faced with this problem, one potential solution was to use acronyms or deliberate misspellings of common words. Thus we have terms like “EZ,” “Rite,” “Savr” and many more as part of brands and potential trademarks. Others combine common words into unique words such as “WhatsApp”. The theory goes that these terms are not part of the official or orthodox English language, and thus the public policy behind descriptive marks to preserve as much of the language as possible for the use and benefit of the general public is largely inapplicable.
While an innovative strategy, the use of acronyms and misspellings has not been a wildly successful strategy. The principal reason is that trademarks are a constantly evolving area of the law that is highly sensitive to changing standards and usage of language. As we head into the postmodern (or post-postmodern as suggested by some commentators) era, our daily use of language has also shifted. There is a general trend towards condensation of language, perhaps proliferated by the pervasive presence of text messages, email, tiny touchscreen devices, and the ever decreasing amounts of time the average person has to write out long and thoughtful personal letters by hand. Terms like “LOL” and “BRB” are becoming ubiquitous in written correspondence, and perhaps most disturbingly to some, in spoken communication.
The general rule applied by the courts deciding cases involving acronyms and misspellings is simply: does the term have the same connotation to the mind of the public as the original or correctly spelled term? If so the acronym or misspelled term receives the same degree of protection as the original term: i.e. very little or none in most cases.
In general, geographic marks or terms are viewed as descriptive, and thus need secondary meaning. There is also the threshold question of whether the term is in fact geographic, and this issue is not particularly easy to resolve. We may discuss geographic terms in greater depth in a future post but for now it is enough to note that the USPTO has elaborate procedures for analyzing these marks. One of the central issues is whether the mark is geographically descriptive or geographically misdescriptive. A misdescriptive mark is a situation where the product is not associated with the geographic term in its name. Hypothetically, if Arizona brand iced tea were not made nor sold in the state of Arizona, it would be a misdescriptive mark. One final point of note: there is a species of trademark fair use in the geographic sphere. A senior user of a descriptive geographic term with secondary meaning may not absolutely prevent a junior user, in the same geographic area, from using the geographic term. Instead, the courts do a judicial balancing – allowing the junior user to describe his product, but forcing him to do so in a way that minimizes the likelihood of customer confusion.