Merely descriptive vs suggestive — The unwritten rule of trademark law

On the whole, trademark law is incredibly comprehensive, but there’s one important rule that’s still unwritten — how to distinguish between ‘merely descriptive’ and ‘suggestive’ trademarks.

The difference between these two types of trademark can be contentious. A merely descriptive mark is something that gives the customer an immediate idea of what the name entails and requires no existing knowledge to make sense of. A suggestive mark, on the other hand, is something that alludes to its purpose but doesn’t explicitly state it. In other words, it requires some of the customer’s imagination to make sense of what it means.

The website JD Supra explained it rather succinctly by writing “the fictional mark SUNSTOP would likely be considered merely descriptive of sun block preparations, while SOLAR GOO is considered suggestive when used for the same type of product”.

The distinction between the two might be blurry at best, but there’s a reason why it’s so crucial. If a mark is deemed to be merely descriptive and not suggestive, then it cannot actually function or be enforced as a trademark.

This is what the American company Driven Innovations found out the hard way a few years back. In 2006 it applied to register the mark DOTBLOG, describing the service at the time as “providing specific information as requested by customers over the Internet”. The application was granted in 2010, and so two years later the company applied for a Statement of Use to run its website.

However, the United States Patent and Trademark Office (USPTO) stopped the company in its tracks by refusing the mark on the grounds that the DOTBLOG was, in fact, merely descriptive, as it was explicitly alluding to its services as a blog aggregating site.

DOTBLOG spent the next five years appealing the case in various courts, and the case finally came to an end at the start of 2017 when the Federal Circuit Court of Appeals ruled in the company’s favour. It declared that the mark was suggestive, because no customer would feasibly be able to understand the services it provides just by looking at the DOTBLOG name. In fact, the Federal Circuit said that to rule the other way would “logically result in the refusal to register any mark that includes the word ‘blog’ whenever the mark’s associated product or service relates in some way to blogs”.

The Federal Circuit even acknowledged how difficult it can be to differentiate between merely suggestive and descriptive marks, saying that “if the mental leap between the word and the product’s attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness”. With this in mind, it’s something well worth considering before you take the leap and apply for a trademark. If the mark seems too descriptive, perhaps it’s best to err on the side of caution and brainstorm some alternatives.