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How do I respond to a "merely descriptive" refusal?

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Written by Igor Demcak

Founder & Trademark Attorney

If you received a merely descriptive trademark dismissal from the USPTO, the ideal response will depend on your case and the issues mentioned in the office action. However, most commonly, a response to this refusal will include a legal argument, potentially backed by supporting evidence, proving one of the following:

  • That the mark has already acquired distinctiveness through actual use in the market,
  • That the mark has a secondary meaning,
  • That the mark includes an element lending it distinctiveness, even if the other elements are descriptive,
  • That the mark is suggestive rather than descriptive.

Alternatively, you can amend the application to the Supplemental Register.

If you choose to pursue one of the strategies mentioned above, we highly recommend seeking the help of a trademark attorney who can help you write a proper response.

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