Choosing Your Trademark Wisely

When choosing a trademark to serve as a brand name for your product, consider whether the trademark is “merely descriptive" as opposed to “suggestive."

On June 21, 2010 the Trademark Trial and Appeal Board (TTAB) upheld the rejection of an application to register the mark TEQUINI for “an alcoholic beverage, namely tequila and prepared alcoholic cocktails containing tequila." The TTAB found the mark to be merely descriptive. On June 22, 2010, the TTAB reversed the rejection of an application to register the mark MARGARITA COMPANY for “restaurant and bar services." The TTAB found the mark to be suggestive.

The law governing both of these marks is the same. If a mark is deemed merely descriptive, it cannot be registered on the Principle Register. Suggestive marks, on the other hand, may be registered. Simply, a mark is merely descriptive if it merely describes the product or service it represents. This is not a guessing game, but rather a conclusion reached with complete knowledge of the mark and the products or services the mark is attached to. A mark is suggestive if a bit of thought is required to link the mark and the products or services. Thus, knowing the mark and the associated products or services, a connection between the two exists, but is not initially obvious. Marks used in incongruous ways are sometimes indicative of suggestive marks.

Finally, marks of two or more words are termed composite marks. Composite marks must be examined in their entirety. Thus, the individual components of a composite mark may be individually categorized, but the effect the individual components have on one another must also be accounted for. With respect to the combination of merely descriptive terms, the combination must result in a “unique commercial impression." In other words, the combination of merely descriptive terms must be more than a merely descriptive term.

For the mark TEQUINI, the TTAB cited numerous websites found by the examining attorney containing recipes for cocktails called “Tequinis." To rebut this, the applicant merely cited the absence of the term “Tequini" from The Complete Beverage Dictionary and the Random House Webster’s Unabridged Dictionary. The TTAB was not persuaded by the absence of the term from the dictionary. Although the mark TEQUINI does require a bit of thought to link the term with the product, the TTAB ultimately concluded the mark TEQUINI merely describes what it is, a tequila martini. The TTAB also noted no incongruity, ambiguity or imagination is required to understand the significance of the mark. The Examining Attorney also noted evidence of other registrations disclaiming the mark in question is not probative as to the registrability of the mark previously disclaimed. Disclaiming can occur for many reasons other than a preexisting bar to registration.

In contrast, for the mark MARGARITA COMPANY, the TTAB’s decision is largely rooted in the double meaning of the term “margarita." In one sense, “margarita" refers to a tequila cocktail, however, in another sense it is a girl’s name in Spanish. The TTAB placed emphasis on the latter definition, and concluded the composite term is incongruous because an entity serving margaritas (the cocktail) does not make one think of a Margarita company. Rather, to the TTAB, the mark suggests an industrial or manufacturing entity engaged in making Spanish or Mexican products. The TTAB found this mark to be an unusual and imaginative means of referring to a restaurant or bar selling margaritas. Thus, the TTAB concluded the mark is suggestive; however, it noted the line between a suggestive and merely descriptive categorization is a thin one, which often involves subjective judgment.

Another distinction between the two marks was that the Tequini mark had extensive internet evidence of that term being used in a descriptive capacity to describe the same type of product that the registrant intended to use with the mark. The Margarita Company mark was not shown to ever have been used descriptively. This supports the idea that TEQUINI, due to its descriptive use, is in fact merely descriptive, while MARGARITA COMPANY is suggestive because it has never been used in such a way.

Thus when picking a mark, do not only focus on picking a mark with no potential conflict. Also pay close attention to whether the mark will be deemed merely descriptive. If so, it is wise to pick another mark rather than investing your resources on an unenforceable and unprotectable