Selecting Merely Descriptive Trademarks Can Be A Risky Branding Strategy

The U.S. Court of Appeals for the Fifth Circuit recently reminded trademark owners that secondary meaning may not necessarily develop over time for a merely descriptive trademark. A merely descriptive mark is one that describes a feature, function, purpose, ingredient, quality, or use of an applicant’s goods or services. This principal is discussed in the Trademark Manual of Examining Procedure §1209.01 (b) and on our web page entitled Disadvantages of Descriptive Trademarks. A merely descriptive mark cannot be registered on the Principal Register because it lacks distinctiveness.

Marks on the Supplemental Register are weak marks that are difficult to enforce and will only receive a narrow scope of protection. Significant effort and resources must be invested over time to strengthen the merely descriptive mark through use, promotion, marketing, and advertising the mark in commerce. A significant budget must exist for marketing and advertising.

If an owner of a merely descriptive mark wants to sue for infringement, he must prove that he owns a proprietary right in the mark by showing the mark has acquired distinctiveness. Often, the end result will be that the mark owner is unable to prevent competitors from using a similar mark on a related good or service and this was the outcome in the Fifth Circuit in Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc. Case No. 20250 (5th Cir., August 21, 2015).

This matter involves a dispute between two companies using the same mark TESTMASTERS and both companies are in the business of test preparation. Both parties have clients seeking to achieve high scores on standardized tests. Test Masters Educational Services, Inc. (“TES”) focuses its services on engineering licensing exams, but also offers test prep for the LSAT exam. The other party Robin Singh Educational Services, Inc. (“Singh”) offers LSAT courses and courses for other exams. Singh applied for federal registration for the mark TESTMASTERS and it was granted. Subsequently, Singh also attempted to purchase the domain and discovered that TES owned the domain and was using it to market its test preparation services. Upon learning this Singh’s trademark counsel sent TES a Cease & Desist Demand. Thereafter, various lawsuits were filed and the parties have been in litigation over the matter for over ten years.

The first lawsuit was filed by TES against Singh in 1999 and the U.S. Court of Appeals for the Fifth Circuit held that the mark TESTMASTERS is descriptive and TES’ trademark rights were restricted to Texas. In addition Singh failed to prove that the mark TESTMASTERS had acquired secondary meaning. A second lawsuit was filed by Singh against TES and the Court made a very similar finding. In finding that there was a lack of secondary meaning the Court used a seven-factor test, assessing the following factors: (1) the length and manner of use of the mark; (2) the volume of sales; (3) the amount and manner of advertising; (4) the nature of use of the trademark in newspapers or magazines; (5) consumer survey evidence; (6) direct consumer testimony; and (7) the defendant’s intent in copying the mark.

In assessing whether a mark has developed secondary meaning the primary inquiry is evaluating the consumer’s attitude towards the mark. Consumers must associate the mark with only one source, one company. Since both parties were using the same mark for the same services, consumers did not relate the mark to a single source. The Fifth Circuit affirmed the district court’s finding that the mark TESTMASTERS did not acquire secondary meaning in unrestricted geographic areas and subject matters.

The issue was decided on summary judgment. The Court held that TES was not able to show that TESTMASTERS developed secondary meaning on a nationwide basis for test preparation courses. The difficulty with descriptive marks is that they can only develop secondary meaning if the mark is uniquely associated with a single source. Therefore, if you cannot demonstrate substantially exclusive use, secondary meaning cannot be achieved. Attempting to build a strong brand through use of a merely descriptive trademark is a challenge and trademark owners should be cognizant of the tests utilized by the Courts and the USPTO to determine if secondary meaning exists. Moreover, such owners need to have the resources necessary for significant marketing, promotion and advertising. We counsel our clients to select inherently distinctive marks thereby reducing the likelihood of third party use and foregoing the need to prove secondary meaning.