Earlier I discussed QUATTROPORTE and how it was merely descriptive for a four-door car. My friend Ben Perry (who I’m tagging in this post) made a comment that made my question whether or not I did a good job of explaining “merely descriptive” or not. I decided that if a smart guy like Ben was confused, then I probably did a poor job of explaining things. So I’m trying again.
When we evaluate whether or not a certain mark is “merely descriptive” of the goods, we have to look at the mark in the context of the goods. If the mark uses standard words (as opposed to made-up words) to describe the target user of the goods, a quality of the goods, the size of the goods, or anything that might describe the goods, then there is a good chance that the mark will be considered “merely descriptive.”
For example, if I use the word JAGUAR as a trademark for a car, that’s a real word in the English language, but it doesn’t describe anything about the goods, but rather suggests certain qualities about the car (fast, sleek sexy, etc.). In contrast, if I use the word QUATTROPORTE (translated as “four doors”) as a trademark for the car, that is a word I can use to describe the car, a car with four doors.
So in the context of cars, QUATTROPORTE is descriptive. In the context of other goods that don’t have doors, QUATTROPORTE would not be descriptive. The question of whether a mark is descriptive is always evaluated in the context of the goods with which the mark will be used.
The question of whether or not a proposed trademark is “merely descriptive” has nothing at all to do with whether others are using the same work on similar goods. That inquiry is not necessary to decide whether or not a mark is “merely descriptive.” When deciding the descriptiveness of the mark, we ask, “Is there anything about this mark which is describing a quality of the goods?”
The question of whether others are using the mark is properly part of the “confusingly similar” analysis, and not at all part of the “merely descriptive” analysis. If others are using your proposed mark or something confusingly similar to it, then your mark may not be registrable because it’s “confusingly similar” to another registered or common law trademark. While it’s true that your “merely descriptive” proposed mark may also be “confusingly similar” to the mark of another, keep in mind that the prior mark may not be registrable for reasons of being “merely descriptive” in addition to being “confusingly similar” to your proposed mark. There can be more than one reason why a given mark is not registrable, and being “merely descriptive” of the services is but one of them. I hope that helps explain the issue.
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