What is a “Merely Descriptive” Issue

A “merely descriptive” issue (2(e)(1) in USPTO classification) refers to a rejection of a trademark application because the applied-for mark is considered to merely describe the goods or services being offered, rather than serving as a unique identifier for a particular brand. A mark is considered “merely descriptive” if it immediately conveys information about a feature, characteristic, function, or ingredient of the goods or services it is used to identify. For example, the mark “Coffee Express” for coffee delivery services is considered merely descriptive and would be refused registration. To be registrable, a mark must be distinctive, meaning that it must serve as a source identifier, rather than merely describing the goods or services it represents.

To overcome a merely descriptive refusal, you can respond by making arguments that the trademark has acquired distinctiveness through its use in commerce or by making changes to the trademark to make it more arbitrary or fanciful. You may also provide evidence of acquired distinctiveness, such as sales figures, advertising expenses, length of use, and customer recognition surveys.

Another option is to choose to amend the trademark application by submitting a new trademark or by changing the description of the goods or services in the application. The changes should make the trademark less descriptive of the goods or services and therefore more registrable.

It is important to carefully review the USPTO’s refusal and consider the specific facts and circumstances of your case before responding. An attorney who specializes in trademark law may be able to provide helpful guidance in developing a response strategy.