Descriptiveness is a slightly unexpected and common pitfall when it comes to registering a trademark. If your trademark is descriptive, meaning that your mark merely describes your goods and services in a common and generic way, then trademark registration will be difficult unless modifications are made to enhance the uniqueness of your mark.
For example, if you have a Doughnut shop where you sell hot doughnuts and you submit an application to register the trademark ‘hot doughnuts’ …your application will likely be denied because, your mark merely describes your goods and services in a common way. [i.e. – a Google search on ‘hot doughnuts’ returns over 1,740,000 results in 0.18 seconds and these results are linked to doughnut shops and bakeries all over the world that also use the phrase ‘hot doughnuts’ to describe what they sell.] Since ‘hot doughnuts’ is commonly used to describe doughnuts, it is too literal of a description to be registered as a trademark for a shop selling hot doughnuts.
Fire up your creative juices and make your trademark unique and not merely descriptive.
See also: more info on recent disputes involving this issue: Coppola and his family trust have sued a small restaurant in Novato, CA –> http://wp.me/p10nNq-kz and designer Louboutin’s Red Sole Shoes–> http://wp.me/p10nNq-cy ; @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.