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What is a "merely descriptive" refusal?

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Written by Tomas Orsula

Senior Trademark Attorney

A merely descriptive refusal, issued under Section 2(e)(1) of the Lanham Act, is an action raised by the USPTO in response to a trademark application that is seen as merely descriptive of goods and services offered under the applied-for mark.

For example, the name SuperSoft for a brand selling blankets would be considered descriptive. The problem with descriptive marks is that they fail to fulfil the basic function of a trademark - clearly distinguish a source of goods and services.

To overcome this type of refusal, the applicant may choose to:

  • Prove the mark possesses a sufficient level of distinctiveness - either by proving the mark is suggestive rather than descriptive, proving a secondary meaning of the mark or proving the mark has already acquired distinctiveness through actual use on the market.
  • Seek registration on the Supplemental Register instead of the Principal Register. Marks on the Supplemental Register that are descriptive may gain distinctiveness over time and be moved to the Principal Register later.
  • Reapply and add a distinct element to the mark.
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