Merely Descriptive Case Study: Best Whisk!
Sometimes “merely laudatory” — a subcategory of “merely descriptive” — trademarks are registrable. If the descriptive trademark has been in use long enough, such that it has acquired “secondary meaning” in the relevant marketplace then trademarks for such descriptive terms are often granted.
How do we know what is “long enough?” The more descriptive the term, the more well-known the mark must be in the relevant marketplace for it to have acquired “secondary meaning.” What is the “relevant marketplace?” It is comprised of the consumers that buy in that market. So if the mark is applied to a specialty product, and consumers outside of those who buy that product have never heard of the mark or the product, that doesn’t matter; they are not part of the “relevant marketplace.”
Remember the reason for disfavoring descriptive trademarks: Granting a trademark registration for a term gives the registrant the exclusive right to use that term. If the term is descriptive of some quality or end use of the goods, then the grant of an exclusive right to that term might prevent another business owner from fairly describing their goods. The purpose of trademark law is not to prevent others from describing their goods, but to distinguish the source of the goods or services. So we need to show that the term seeking to be registered has acquired some secondary meaning in the relevant marketplace and is not merely descriptive in the minds of the consumers in that marketplace. In other words, consumers in that marketplace have come to view the term as a source identifier for those goods, and not just a term that merely describes the goods.
Transcript:
When can I register a mark that is merely descriptive, that’s a question that I get asked a lot and I’m going to spend the next four minutes answering it here. I’m Angela Langlotz trademark and copyright attorney, and I go live here on weekdays to discuss trademark and copyright law. So sometimes we have an exception to the rule. The rule that I’m talking about here is the rule that you can’t register a trademark that is merely descriptive of the goods and services.
Now, merely descriptive is an umbrella, and under the umbrella there are different types of descriptive trademarks. You can have marks that are geographically descriptive, like Seattle’s coffee or, you know, East Coast, whatever, right. So if it describes the geographic origin of the goods that’s geographically descriptive. We also have a type of disruptiveness that describes the quality or how great or marvelous the goods are. And that’s called merely laudatory. So merely laudatory falls under the umbrella of merely descriptive.
And I want to do a case study today about a merely laudatory mark that was able to be issued as a trademark on the principle register. So let me switch screens here and show you this trademark.
So the trademark in question is best, and I took this photograph at a cooking store and I saw these whisks there, they’re made in Portland, Oregon, my hometown. And as you can see, the mark right here is best. And I thought to myself, well, I wonder if they have a registered trademark for this mark, because it is laudatory. It talks about the quality of the goods. So it does tell us something that is descriptive about the goods.
These are the best whisks. Will can we get a trademark for that? And the answer is yes. And here it is. This is the best manufacturers. That’s the the company name. You can see it. Woops. Let me scroll down a little bit. You can see it right here. Best manufacturers. OK, now why are they able to register this? Is it because the trademark is the same as their company name? No, that’s not the reason.
The reason is they have been using this mark for so long that it has acquired distinctiveness in the industry. OK, so if you look carefully at the application, you can see here that it was first used in commerce in nineteen. I think they said nineteen fifty one. Where did I get that idea? I think I looked at the actual application itself and the application said that they started using the mark in June of nineteen fifty one here. It says nineteen ninety eight.
I’m not sure how that got there because the application clearly states that they started using it in nineteen fifty one. So if that is the case, if you’ve been using the mark for so long that even though it is merely laudatory, let me switch back to me, even though the mark is merely laudatory or otherwise descriptive, if you have been using the mark for so long that everybody in the relevant industry and that is obviously contextual, right? We look at the relevant industry, is everyone in the relevant industry aware of your brand and have they come to associate that trademark with your company?
If the answer is yes, then we say that the descriptive mark has acquired distinctiveness and is therefore eligible for registration on the principal register. So if you have a laudatory or otherwise merely descriptive mark and you haven’t been using it for five years or more, depending on just how descriptive it is, then it is very likely that you will be invited to register your mark on the supplemental rather than the principal register. Now, that is not that’s not a loss, OK, because you get to hang out in the supplemental register for five years.
And then at the end of that time, if you can show that your mark has acquired distinctiveness, then you will be offered registration on the principal register. I’m Angela Langlotz trademark and copyright attorney. I love to answer questions about copyright and trademark law. So if you have those, go ahead and drop them below in the comments. I’ll answer them in a future live. I invite you to like this video to share it and subscribe to my channel so that you get all my newest information.
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