Acquired Distinctiveness

If your trademark is “merely descriptive,” the Trademark Office will reject your application to register it. You can’t register:*

  • Tears In a Bottle for eyedrops
  • Two Drawers On Wheels for a rolling file cabinet
  • Fresh Brewed & Hot for a coffee shop

But, if you start using that trademark, make sure other people don’t use it, and reach the point where consumers associate what was once just a descriptive word or phrase with you and only you, then you can get a trademark registration.

Trademark lawyers refer to that as “acquired distinctiveness.” Your trademark was “merely descriptive” but it “acquired distinctiveness” and now you can get the exclusive rights to use it.

That happened recently with CHUNKY for soup.

In 2013, CSC Brands LP (Campbells Soup Company) filed two applications to register trademarks that included CHUNKY and in both cases the Trademark Office examiner refused to grant CSC Brands exclusive rights to CHUNKY because it was “merely descriptive” of soup.

In 2018, CSC Brands tried again and were able to get a registration because they were able to show that CHUNKY, once merely descriptive, had acquired distinctiveness: People now associate that word with a particular company for soup and not just any soup that happened to be chunky.

I don’t usually recommend going with a “merely descriptive” trademark but it can sometimes work out.

 

 

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*This isn’t entirely true. Sometimes you can register the trademark on the “Supplemental Register” of the Trademark Office. You get to use the ® symbol and it sets you up to get a registration on the Principal Register later on.

Branding by [Pretending to Have] No Brand

You can never ever have trademark rights to the generic name for your product: You can’t have WASTE BASKET brand trashcans.

But what about using words that literally mean “generic” as a trademark?

Back in the early 1980s, a company began selling GENERIC brand products. The idea was that the products weren’t advertised so they would cost less than “brand-name” products, but of course there was a brand and the brand was GENERIC along with a UPC barcode for a logo.

Now there’s a brand called BRANDLESS.

Brandless, Inc. has a trademark registration for BRANDLESS for a metric assload of products from shampoo to paper towels to snack foods and online retail sales. Brandless, Inc. is also trying to register its logo which includes the “TM” symbol.

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The Trademark Office examining attorney is insisting that Brandless remove the “TM” from the logo.

Sharona Katan, Brandless, Inc.’s attorney makes very compelling arguments for including the “TM” as part of the trademark. “TM” is part of the joke. It’s the ironic juxtaposition of the TM and the word BRANDLESS that is recognized by consumers as being from this particular company.

Ms. Katan cites a dazzling array of circumstances when companies have included TM in their registered trademarks. Here are some of them:

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Unfortunately, the Trademark Office didn’t agree with Ms. Katan’s arguments. Brandless, Inc. elected to voluntarily remove the TM from the application which, from choose-your-battles point of view, probably makes a great deal of sense.

 

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