Marketing is, at its core, an attempt to create a memorable and favorable impression through brand identity. In doing so, marketers are often tempted to use words and phrases that describe their products or are laudatory. Unfortunately, these types of brand names do not readily form the basis for strong trademark rights. Appreciating this problem, some clients are tempted to use words or phrases that are double entrendres, which can elevate an otherwise descriptive mark to a higher status. However, as Calphalon Corp. recently learned in In re Calphalon, 2017 WL 1476288 (TTAB 2017), not all double entendres are created equal, and even the use of a clever misspelling to try to highlight a double entendre might not save a mark from being deemed by the U.S. Patent and Trademark Office (USPTO) to be descriptive. When this occurs, absent a showing of having become distinctive through use, the mark can only be registered on the Supplemental Register, which may present increased burdens when trying to enforce one’s trademark rights.
Descriptive Marks
Trademark rights protect the goodwill and reputation that attach to products that are sold under, or services that are offered under, a brand name, symbol, or design. When an applicant seeks to register a mark, the USPTO will consider where on the continuum of inherent distinctiveness the mark falls. Arbitrary, fanciful, and suggestive terms can readily be the source of strong trademark rights because they are inherently distinctive. In re Chippendales, 622 F.3d 1346, 1350-51 (Fed. Cir. 2010). By contrast, descriptive terms are not inherently distinctive and thus can be the basis of strong trademark rights only upon a showing of secondary meaning; generic terms are prohibited from being the basis of trademark rights. Id.
