USPTO Review of Descriptiveness

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Richard Rimer

February 4, 2022

Trademark applications are reviewed by the USPTO to ensure the application meets certain requirements.  The examiners follow a book known as the TMEP.  I’m an expert on this book.

One item the USPTO must check is whether the brand in the application merely describes the goods or services listed in the application.  The USPTO is quick to issue “descriptiveness” refusals to prevent parties from claiming exclusive rights in common words.  A well-crafted response can change their mind.

Hannah came to me to protect the name of her horse training service—CHEVAL NOIR.  As expected, the USPTO claimed that since this translates to “black horse,” it is descriptive of a trait of the service.  I explained that the addition of “Noir” gave the brand a certain je nai se quoi that only a French term could provide.

I’m a good fit for the brand agency that loves to suggest descriptive brands to reduce advertising spend.  Let the owner know that a descriptive brand is hard to protect, but I can help convince the USPTO that their brand qualifies for protection.