When a Name Falls Flat: The Problem with Merely Descriptive Trademarks

Not every brand name is eligible for federal trademark protection. One of the most common reasons the USPTO refuses an application is that the mark is considered “merely descriptive.” For businesses trying to protect their brand, it can be a frustrating outcome: the name feels right for the product, but it fails the legal threshold for distinctiveness. This article explains what “merely descriptive” means under trademark law, why the USPTO rejects these kinds of marks, and how applicants can still pursue protection if their mark is initially refused. 

1. Evaluating Trademark Strength 

In trademark law, brand names fall into four main categories of distinctiveness. 

Fanciful and Arbitrary Marks (Most Distinctive) 

Fanciful marks are completely made-up words that have no meaning until they are connected to a product or service. For example, “Pepsi” for soft drinks. 

Arbitrary marks are real words, but they have nothing to do with the product they’re selling. For example, “Apple” for computers.    Fanciful and Arbitrary marks are considered inherently distinctive and can usually be registered with the USPTO. 

Suggestive Marks 

These hint at something about the product—like its qualities or benefits—without saying it directly. They are still considered unique because they require a little imagination to make the connection. 

Suggestive marks are also considered inherently distinctive and can usually be registered with the USPTO; however, sometimes the dividing line between suggestive marks and marks belonging to the next tier is often blurry. 

Merely Descriptive Marks 

These directly describe a feature, quality, or purpose of the product or service. In general, the USPTO won’t register these unless certain circumstances exist. 

Generic Terms (Least Distinctive) 

These are the everyday names for products or services, such as “Shoes” for footwear. Because they simply name the thing itself, they can never function as a trademark and can’t be registered. 

 2. What is a Merely Descriptive Trademark?

A mark is considered “merely descriptive” if it directly communicates something factual about the product or service, such as its function, purpose, ingredients, or a key feature. These marks do not leave room for interpretation; they tell consumers exactly what the offering is. For instance, a name like “Quick Dry” for towels or “Custom Cookies” for personalized baked goods would fall into this category. 

The problem is not that these marks lack marketing appeal. They do not perform the legal function of a trademark: identifying the source of a good or service. If the public sees the mark as nothing more than a description of what is being sold, it fails the distinctiveness test and cannot qualify for full protection. 

Under Section 2(e)(1) of the Lanham Act, merely descriptive marks are barred from the Principal Register unless the applicant can prove that the public has come to associate the mark with a particular source. This is known as acquired distinctiveness or secondary meaning. Until that threshold is met, the USPTO treats such marks as part of the shared commercial language, free for any business to use. The policy behind this is simple: trademark law protects brand identity, not exclusive rights to ordinary terms that describe a product’s basic traits. 

Context also matters. A word might be descriptive in one setting but registrable in another. For example, the word “Sharp” might be descriptive if used for kitchen knives but not if used for a design agency or music streaming platform. The USPTO always considers the mark in relation to the specific goods or services listed in the application, and how consumers would encounter it in the marketplace. 

In essence, if a name tells consumers what the product is without making them think twice, it likely will not qualify as distinctive. 

3. Examples of Descriptive Marks

Descriptive marks often sound appealing because they make it immediately clear what a product is or does. For marketing, that can be a strength. However, for trademark protection, that clarity usually spells trouble. The USPTO evaluates descriptiveness based on how the term is understood in the context of the applicant’s goods or services, not how unique or polished the branding may feel. 

Consider the mark “Cold and Creamy” for frozen yogurt. It conveys a textural and sensory description of the product without requiring any mental leap. The same would be true of “5 Minute Glue” for an adhesive that sets quickly; it directly names a key performance feature. These terms tell consumers what they are getting, but do not help identify who is selling it. They give information, not distinction. 

Other common examples of descriptive marks include: 

• "Budget Bins" for low-cost storage containers: describes price and product  

• “The Car Wash” for vehicle cleaning services: states the service directly 

• “All Natural Cleaning Co.” for household products: describes ingredients and industry 

When the USPTO determines that a mark seeking registration or the Principal Register is merely descriptive, they will issue an office action requiring the applicant to argue that the mark is sufficiently distinct, prove that the mark has obtained the acquired distinctiveness, or provide them with the opportunity to seek registration on the Supplemental Register instead.  

4. Why does the USPTO Reject These Marks? 

The USPTO’s approach to merely descriptive marks reflects a broader policy concern: protecting the shared language of commerce. If businesses were allowed to monopolize terms that directly describe their products (i.e. “Crunchy Granola” or “Fresh-Fit Meals”), competitors would be unfairly limited in how they truthfully advertise their own offerings. Trademark rights are meant to prevent consumer confusion, not to suppress fair description. 

That is why Section 2(e)(1) of the Lanham Act prohibits registration on the Principal Register for marks that plainly describe a product’s qualities or characteristics. The rule ensures that descriptive terms remain available to the broader marketplace, particularly in competitive industries where accurate language is vital. A company cannot monopolize the language consumers rely on to evaluate products, especially when that language conveys functional or factual information. 

When reviewing an application, the examining attorney evaluates descriptiveness in context. It is not enough to argue that the mark is clever or effective in marketing; what matters is whether the term tells consumers what the product is, does, or contains. The USPTO frequently supports refusals by pointing to dictionary definitions, widespread industry use, or even the applicant’s own marketing materials. If those sources show that the public is likely to interpret the mark as informational rather than source-identifying, a refusal is likely. 

Notably, the standard is not whether the term is generic. That is a separate bar entirely. A merely descriptive term can still be unique to some degree, but if it falls short of distinctiveness, it will not qualify for full federal protection unless the applicant can prove that it has acquired secondary meaning. 

In practice, this means businesses must think beyond branding appeal. Even effective marketing names can falter if they do not help consumers identify the source.  

5. What is the Difference Between Descriptive and Suggestive Marks? 

Distinguishing between merely descriptive and suggestive marks can be tricky, but the difference carries serious consequences for registrability. The question is not just about word choice. It is about how the consumer connects the mark to the underlying product or service. A descriptive mark tells you what something is. A suggestive mark makes you think. 

As discussed above, a descriptive mark gives consumers immediate information about the nature, purpose, or quality of the goods or services. For example, “Sugar-Free” for candy or “Waterproof Coats” for outerwear spells out a defining feature. These marks require no interpretive leap and therefore fail to function as a source identifier without more. 

A suggestive mark, by contrast, implies something about the product but stops short of naming it outright. For example, “Coppertone” for sunscreen suggests a bronzed, sun-kissed appearance, but it does not directly describe the product or its ingredients. Similarly, “Greyhound” for a bus service implies speed and “Netflix” combines “internet” and “flicks” to suggest streaming content, but they are not literal descriptions of a good or service. These kinds of marks, while still tied to the nature of the goods, are treated as inherently distinctive and can be registered without proof of secondary meaning. 

Courts and the USPTO commonly use the "imagination test" when drawing the line between descriptive and suggestive marks. If a consumer must exercise a degree of thought or perception to understand the connection between the mark and the goods, it is likely suggestive. This would subsequently make it inherently distinctive and registrable.  On the other hand, if no imagination is required and the mark simply conveys information, it is descriptive. 

Since the distinction between the two types of marks can be nuanced, this is one of the most litigated and debated issues in trademark law. Applicants unsure where their mark falls should consult a trademark attorney before filing. The difference could determine whether a mark sails through examination or hits a wall. 

 6. Potential Path to Registration: Acquired Distinctiveness 

Although merely descriptive marks are generally barred from registration on the Principal Register, there is an exception for those that have acquired distinctiveness. Also referred to as secondary meaning, this legal concept refers to a mark that, through consistent and exclusive use, has come to signify a single source in the minds of consumers, even if the mark itself initially lacked inherent distinctiveness. 

The statutory basis for this path appears in Section 2(f) of the Lanham Act. It permits registration if the applicant can demonstrate that the public no longer sees the term as merely descriptive, but as a brand identifier. This is not a hypothetical standard; the USPTO requires evidence (sometimes substantial) to establish that consumers associate the mark with a particular source. 

The kind of proof required varies depending on how descriptive the term is. The more descriptive the mark, the more compelling the evidence must be. In general, the USPTO looks at several categories of evidence:  

• Duration and exclusivity of use: A mark that has been used continuously and without interruption for five years may qualify, but that alone is not always enough. 

• Sales and advertising figures: Strong numbers can suggest market penetration and consumer recognition. 

• Declarations and affidavits: Signed statements from industry professionals or customers may be helpful, particularly if paired with other forms of proof. 

• Consumer surveys: Direct evidence showing that a significant percentage of consumers associate the mark with a single source is often persuasive. 

• Media recognition: Articles, features, or unsolicited coverage that link the mark to the business can also carry weight. 

Still, the USPTO does not apply a bright-line rule, and claims of acquired distinctiveness are frequently scrutinized. A vague or self-serving assertion that a mark “has become well known” will not suffice. The applicant bears the full burden of persuasion, and in borderline cases, even a full five years of use may not tip the scale, particularly if the mark describes a central characteristic of the product.  

While this path is not without hurdles, it can turn a weak mark into a strong one. Businesses that commit to building brand identity over time can use an assertion of acquired distinctiveness as a powerful tool to secure trademark protection, even when the name they chose started out as merely descriptive.

 7. Potential Path to Registration: Supplemental Register

For applicants unable to prove acquired distinctiveness, the Supplemental Register offers a practical alternative. It exists for marks that are not yet eligible for the Principal Register but still serve a purpose in brand development. While registration on the Supplemental Register does not provide the full range of trademark protections, it still offers meaningful legal benefits, especially for businesses hoping to strengthen their brand position over time. 

Unlike the Principal Register, which requires either inherent distinctiveness or secondary meaning, the Supplemental Register accommodates descriptive marks that have not yet reached that threshold. This includes startups, rebrands, or businesses still establishing themselves in the marketplace. Importantly, a mark on the Supplemental Register still counts as a federal trademark registration. 

 The benefits are not superficial. A mark listed on the Supplemental Register can: 

• Use the ® symbol, signaling that the mark is federally recognized. 

• Appear in USPTO search results, deterring later filers from adopting a confusingly similar mark. 

• Serve as a basis for opposition or cancellation proceedings against later-filed applications. 

• Be recorded with U.S. Customs and Border Protection to prevent the importation of infringing goods. 

• Provide a foothold for eventual transition to the Principal Register upon showing acquired distinctiveness. 

However, the limitations are real. First, you must be using the mark in commerce for consideration on the Supplemental Register. This means that you cannot submit an “Intent to Use” application for registration on the Supplemental Register. 

Furthermore, unlike marks on the Principal Register, those on the Supplemental Register do not enjoy a presumption of validity, ownership, or exclusive nationwide rights. The registration cannot serve as a basis for filing an international application under the Madrid Protocol, a system that allows businesses to seek trademark protection in multiple countries through a single filing. Additionally, the Supplemental Register does not give you an early legal advantage by locking in your rights from the date you filed your application. On the Principal Register, that date can be used to claim priority over others who try to register or use a similar mark later, but on the supplemental register, you do not get that head start. You only gain rights as your mark becomes known through actual use. In short, the Supplemental Register is a stepping stone, not a full endorsement.

Nevertheless, that stepping stone can be critical for many businesses. It allows a brand to grow in legal stature while protecting the mark from encroachment. Applicants can later amend the registration or refile on the Principal Register once the mark acquires distinctiveness.  

Choosing the Supplemental Register is not a fallback but a calculated move. It signals that the applicant understands the trademark landscape and is building toward long-term brand strength rather than risking rejection and starting from scratch. 

8. What Happens if You Apply Anyway?

Some applicants file a trademark application on the Principal Register without realizing their name is merely descriptive. Others might know the risk but hope to slip through without issue. Either way, the outcome is often the same: the USPTO issues an Office Action citing a refusal under Section 2(e)(1) of the Lanham Act. That refusal signals that the mark is too descriptive to qualify for protection on the Principal Register, at least without further evidence.  

Once that happens, the applicant has a few limited paths forward. One option is to submit legal arguments showing that the mark is not actually descriptive in context. Another is to amend the application to the Supplemental Register, if eligible. Alternatively, the applicant can try to prove the mark has acquired distinctiveness. Each of these paths can add cost and delay, especially if they require attorney involvement or formal submissions.  

There is also reputational and strategic risk to consider. A refused application is part of the public record. If a business has already invested in branding, a rejection can complicate future enforcement efforts. Competitors may also cite that refusal as evidence that a brand lacks distinctiveness. In some cases, a company may be forced to pivot or rebrand, which can be both expensive and disruptive. 

Ultimately, descriptive marks are not always doomed but come with “legal baggage.” Filing blindly can lead to setbacks that were avoidable with stronger planning. That’s why it’s worth seeking legal advice and carefully considering your path forward when an attorney flags a mark as “merely descriptive”. It’s not just legal nitpicking; it’s a warning that your application may face hurdles or delays. Businesses that understand how the USPTO evaluates distinctiveness from the outset are far better positioned to choose a protectable name and avoid unwanted surprises.