Descriptive marks consist of words that are indicative of the characteristics or qualities related to the goods or services associated with the mark. Unlike suggestive marks which require the consumer to use reasoning to understand the mark’s significance, descriptive marks receive less protection under the Lanham Act because they directly illustrate some characteristic of the products that require very little explanation to understand their meaning. Descriptive marks can come under protection if they acquire distinctiveness related to the seller’s goods or services.
A mark is merely descriptive when it illustrates only the purpose, quality, or feature of the goods or services. Courts determine whether a mark is merely descriptive by looking at the context in which the goods or services are used and their significance to an average consumer. In the Federal Circuit, this is a question of fact, and the party trying to prevent the registration of the mark bears the burden of proof that a mark is descriptive by a preponderance of the evidence. Translating the characteristics of the goods or service does not render the mark non-descriptive because only its meaning to the consumers who understand the product’s use is relevant.
In the Ninth Circuit, the courts generally apply the imagination test and the competitors’ needs test to distinguish merely descriptive marks from suggestive marks. The imagination test asks whether a consumer must use one’s imagination to understand the nature of the product. The competitors’ needs test examines the extent to which the competitors need the mark for their products. If the competitors have a high need to use the mark, the mark is probably descriptive. See: Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. (2017)
[Last updated in November of 2022 by the Wex Definitions Team]