When you’re building a restaurant brand, securing a trademark is a crucial step in protecting your identity and ensuring customers associate your name with your unique offerings. But what happens when the USPTO refuses your trademark application because it’s considered “merely descriptive”? If you’ve received an office action on these grounds, you’re not alone. Many restaurant owners face this issue, but with the right approach, you can navigate this challenge effectively.
Understanding a Merely Descriptive Trademark
A merely descriptive trademark is one that immediately conveys an ingredient, quality, characteristic, feature, purpose, or function of the goods or services it represents. In other words, if a consumer can look at the trademark and instantly understand what the business provides, the USPTO may determine that the mark lacks the distinctiveness needed for registration.
For example, a restaurant called “Best BBQ Ribs” would likely be considered merely descriptive because it directly describes the food offered. Similarly, a bakery named “Flaky Croissants” would face the same challenge. These names don’t require any imagination or interpretation—they plainly state what the business sells, making them weak candidates for trademark protection.
Why Does the USPTO Reject Merely Descriptive Trademarks?
The USPTO’s refusal of merely descriptive trademarks is based on the principle that no single business should have exclusive rights to common words or phrases that others need to describe their goods or services. Imagine if one restaurant could trademark “Delicious Burgers”—it would unfairly prevent others from using those words in their branding.
Trademarks are meant to distinguish one business from another, not to monopolize everyday language. If a trademark lacks distinctiveness, it does not serve the purpose of brand identification, and the USPTO will likely issue an office action refusing registration.
How to Determine if Your Trademark Is Merely Descriptive
Before applying for a trademark, ask yourself these key questions:
- Does the trademark immediately inform consumers about a key aspect of the business?
- Would a competitor reasonably need to use the same words to describe their own products or services?
- When someone sees the trademark, do they instantly understand what is being offered?
If the answer is “yes” to any of these, the USPTO may consider your mark merely descriptive. However, not all hope is lost—there are ways to overcome a refusal.
Overcoming a Merely Descriptive Trademark Office Action
If you receive an office action rejecting your trademark as merely descriptive, you have several potential strategies to respond effectively:
1. Argue That the Trademark Is Suggestive, Not Descriptive
One of the best ways to overcome a refusal is by demonstrating that your trademark is suggestive rather than merely descriptive. A suggestive trademark hints at the nature of the business without directly describing its goods or services. This type of mark requires consumers to use some imagination or perception to understand its connection to the business. If a trademark conveys a broader concept or evokes an idea rather than explicitly stating a characteristic of the restaurant, it may be categorized as suggestive rather than merely descriptive. If you can demonstrate this distinction, the USPTO may reconsider its refusal.
2. Prove Acquired Distinctiveness (Secondary Meaning)
Even if your trademark is descriptive, you can still obtain registration by demonstrating that it has acquired distinctiveness through long-term use and consumer recognition. This is also known as secondary meaning—when customers associate the mark specifically with your restaurant rather than as a generic description.
Evidence that may support this argument includes:
- Years of continuous use of the trademark in commerce
- Sales figures and revenue data showing widespread consumer exposure
- Marketing and advertising expenditures
- Customer testimonials or survey data proving brand recognition
- Media coverage highlighting the restaurant’s unique brand
If you can prove that your descriptive trademark has become uniquely tied to your business in consumers’ minds, the USPTO may allow it to be registered on the Principal Register rather than the Supplemental Register (which offers fewer protections).
3. Amend the Application to the Supplemental Register
If your mark is deemed merely descriptive and hasn’t yet acquired distinctiveness, you may be able to register it on the Supplemental Register instead. While this doesn’t grant the full benefits of a Principal Register trademark (such as nationwide exclusivity and strong enforcement rights), it still provides:
- The legal right to use the registered ® symbol
- The ability to block later applications for confusingly similar marks
- A foundation for future registration on the Principal Register after acquiring distinctiveness
For many restaurant owners utilizing more descriptive names, the Supplemental Register may be a a practical option while building brand recognition.
4. Modify the Trademark to Include a Distinctive Element
Sometimes, making a small change to a merely descriptive trademark can strengthen its distinctiveness. Adding a unique design element, an arbitrary word, or a coined term can help push the mark toward registrability. By incorporating a unique brand element, you reduce the risk of a merely descriptive refusal while still conveying your restaurant’s theme.
Avoiding Descriptive Trademarks From the Start
If you’re in the early stages of branding your restaurant, it’s wise to choose a strong, distinctive trademark from the beginning. The best trademarks fall into one of these categories:
- Fanciful – Completely made-up words (e.g., “Zaxby’s,” “Kodak”)
- Arbitrary – Common words used in an unrelated industry (e.g., “Apple” for technology, “Blackbird” for a café)
- Suggestive – Words that hint at a business’s offerings but require imagination (e.g., “Blue Apron” for meal kits, “Smoky Barrel” for a BBQ joint)
Choosing a name with built-in distinctiveness helps avoid office actions and strengthens your brand’s legal protection.
Need Help Overcoming a Merely Descriptive Trademark Refusal?
Receiving an office action from the USPTO can be frustrating, but it doesn’t mean the end of your trademark journey. With the right approach you can increase your chances of successful registration.
If you’ve received a refusal for a merely descriptive trademark, don’t navigate the process alone. As a trademark attorney specializing in helping restaurants protect their brands, I can guide you through the best strategy for your situation.
Contact me today to discuss your office action response and take the next step in securing your restaurant’s name for the long haul!
