Definition of Trademark Issue 2(e)
About 3 months after filing a trademark at the USPTO, the trademark application gets assigned to an Examining Attorney. The Examining Attorney will review the trademark for filing formalities and will also conduct internal trademark conflict searches (or clearance searches). During the Examining Attorney’s review of the proposed trademark, the examiner will carefully review the relationship between the proposed trademark and the goods or services that the applicant is looking to sell under the trademark. (Remember that trademarks cannot be protected in a vacuum – a trademark is always protected in connection with specific goods or services listed in the application.)
To define trademark issue 2(e) (otherwise known as a descriptiveness issue), one must understand the categorization of trademarks. Not all trademarks are created equal in strength and protection. Fanciful trademarks (made up terms) are generally afforded the most protection. For example, Kleenex is a fanciful term – it did not exist in the English dictionary at the time that that trademark was filed. Arbitrary trademarks, by contrast, are trademarks that are comprised of recognized English words but are used in connection with unrelated products or services. The APPLE brand is a perfect example. The term APPLE obviously is a recognized English word. However, it is applied by the Apple corporation to computer hardware and software, which seemingly have no connection to the word “Apple.” This makes the trademark an “arbitrary trademark” – the trademark owner “arbitrarily” applies a term to a product or service.
Life fanciful trademarks, arbitrary trademarks make strong and protectable trademarks. Trademark law is counterintuitive in that the more disconnected a word or phrase is from the products/services, the more protectable the word or phrase is as a trademark. Unlike fanciful and arbitrary trademarks, merely descriptive trademarks are words or phrases that have a close relationship to the goods or services that the trademark owner sells under the trademark.
Defining Trademark Issue 2(e) – Merely Descriptive Issue
Trademark Issue 2(e) is the USPTO’s determination in an Office Action that the proposed trademark is merely descriptive of a feature, function or ingredient of the goods or services. (2(e) is the section of the Trademark Act that deals with refusals of merely descriptive trademarks.) Suppose for example, that a trademark application is filed for CLEAN in connection with mops. The Examining Attorney at the Trademark Office will find that the term CLEAN “merely describes” the function of the mop – namely, to “lean” floors. A 2(e) merely descriptive issue is just another way of saying that the Trademark Office is taking the position that your trademark cannot be afforded full protection because the trademark describes a feature, function or ingredient of the products or services, and consequently, competitors too need to have the ability to use that descriptive word.
How to respond to a 2(e) Merely Descriptive Refusal
How you respond to a descriptive refusal depends on whether your trademark is IN USE or not. (Remember that a trademark can be filed initially as an IN USE trademark or as an INTENT TO USE TRADEMARK.) A trademark is IN USE if you are actually selling the products or services under the trademark.
If your trademark is IN USE and you receive a Trademark Office Action refusing your trademark because it is merely descriptive, you will have an opportunity to amend your trademark from the Principle Register to the Supplemental Register. The Supplemental Register is a segment of the trademark database that houses all the descriptive trademarks that are IN USE. Protection of Supplemental Register trademarks are not as extensive as those registered on the Principle Register, but there is still some significant benefits to at least owning a trademark on the Supplemental Register.
If the trademark is not yet in use, consider starting to make use of the trademark and then amending the application to an IN USE application. You may then be able to amend the trademark to the Supplemental Register as discussed above. If you will be unable to make use of the trademark prior to the applicable deadline, then unfortunately you may be out of luck – at least with respect to that trademark application. You can always follow up with a separate application for the same trademark as soon as you start making use of the trademark and file it on the Supplemental Register.