Cancellations

If you’ve been hit with a Notice of Opposition or a Petition to Cancel at the TTAB, it’s important to remember the old saying often attributed to military strategists like Sun Tzu: “The best defense is a good offense.” In the TTAB, that can mean fighting back with a counterclaim asserting that your adversary’s trademark registration actually deserves to be canceled. And one of the most potent counterclaims for cancelation argues that your adversary’s mark is “merely descriptive” and thus invalid. In short, you’re saying their mark just describes what they offer in commerce, so they shouldn’t be able to have a monopoly on those descriptors. They’ve tried to weaponize their mark against you, and now you’re going to try to neutralize that weapon.

What does “descriptive” mean?

A mark is “descriptive” if it immediately tells people a feature, quality, function, purpose, or characteristic of the goods or services being offered under that mark—no imagination required. For example, the word “CREAMY” would be descriptive for yogurt. The test asks whether someone who knows the goods/services would perceive the mark as straightforward information about the goods/services.

A rationale of the descriptiveness doctrine is that it prevents any one party from hogging words or designs that everyone in the relevant industry should be able to use to inform consumers about what they are buying. Thus, if you can show that your adversary’s mark is merely product description, that can undermine their core trademark rights.

How to show your adversary’s mark is descriptive

Your job is to prove that your adversary’s mark immediately communicates information about the relevant goods or services. You can try to do this using any competent source of public perception. Great evidence includes:

• Dictionary and technical definitions showing ordinary meaning in the relevant industry or field.
• Your adversary’s own advertising and marketing materials using the mark descriptively.
• Third-party competitors, commentators, or media using the substance of the mark to describe similar goods or services.

You don’t have to show the mark describes everything about your adversary’s goods or services—just one significant characteristic may be enough. Also, if you don’t have all the evidence in hand when filing your counterclaim, you can probe your adversary later, during the stage of the proceeding known as Discovery.

Be ready for push-back

No one likes being told their mark isn’t a valid trademark. If circumstances allow, your adversary might try to defend by asserting “acquired distinctiveness.” Acquired distinctiveness, also called “secondary meaning,” is when a mark that started out as merely descriptive then evolves in consumer perception over time so that it becomes something more: a trademark. Due to the steady and substantial use and promotion of the mark, consumers come to perceive the mark as pointing to a single source of goods/services, rather than just describing the goods/services. Think of it as the moment when a common phrase or design stops being mere description and starts telling consumers, “This comes from us.” However, the more descriptive your adversary’s mark is, the stronger your adversary’s proof of acquired distinctiveness must be. And if your adversary hasn’t been making substantial use of the mark for a while, an acquired distinctiveness argument may be inaccessible to them.

How a descriptiveness counterclaim can potentially flip leverage

This type of counterclaim can be like an arrow piercing the heart of your adversary’s case:

• It can threaten to knock out or narrow your adversary’s registration, thus transforming the entire dynamic of the case.
• It can force your adversary to realize that you aren’t the only one with skin in the game.
• It can boost your settlement leverage. Showing that your adversary’s mark is really just product description can push the dispute toward a negotiated resolution.

What targets aren’t susceptible to a descriptiveness counterclaim

Of course, some marks are simply not the least bit descriptive. Those marks are said to be on the stronger side, and they’re the least likely to be vulnerable to assertions of descriptiveness. For example, the word “APPLE” has absolutely nothing to do with smartphones, tablets, or laptops, so that’s a strong mark. If there’s no way to argue that the mark is descriptive, don’t try that kind of counterclaim.

Also, a trademark registration can “graduate” into immunity from descriptiveness claims. If your adversary already had a five-year-old trademark registration on the USPTO’s Principal Register at the time when they filed their proceeding against you in the TTAB, then a descriptiveness counterclaim is generally unavailable.

Bottom line

A descriptiveness counterclaim can flip the script by challenging the validity of the mark that your adversary is trying to weaponize against you. If their mark is just product description, a counterclaim gives you a way to obliterate or narrow those rights and rebalance the battlefield.