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).