Can I Register A Descriptive Trademark?

Can you register a descriptive term as a trademark? In the next five minutes, I am going to discuss a simple way to get your descriptive term registered as a trademark, even though normally you wouldn't be able to do this. And if you stay until the end, I have a free resource that talks about things that you normally can't register as trademarks. So stay until the end. Drop a comment and I will give that to you just for the asking. You don't even have to opt in.

So a couple days ago I was at Pilates, and they had this wonderful display of toe socks and I noticed something interesting about it. I'll show you what it is here. All right. If you see, so this is a picture I took of the display and you see this little circle R here next to TOESOX. I thought to myself, huh? Well, that's kind of interesting. TOESOX is merely descriptive for socks that have toes. So I'm kind of wondering how they were able to get that registered.

Now, people ask me all the time, Angela, where do you get ideas for all of your videos? Well, my friends, there is an endless amount of material out there because brands are everywhere. So why don't I show you how they were able to get this registered as a trademark? So this is the TOESOX trademark database here. These are all the brands or all the applications that they tried to register. You can see most of them are dead.

Now, the reason for that is because -- I was looking through some of their trademark applications -- and it looks like they have a very inexperienced trademark attorney working on their stuff. It might not even be an attorney at all, I suspect. Either that, or it's somebody who is super inexperienced because they keep making all kinds of kind of dumb rookie mistakes on these trademark applications. Now, the one that I want to talk about is this one right here, the first one that they filed for TOESOX.

So let's have a look at that. Now, we know that this is registered because it actually has in this column, it says registration number. Every application that gets filed gets an application number, but only registered trademarks get a registration number. So let's go look at the registration. You can see it's actually a logo. It's a logo with the word TOESOX as part of the logo. So what they did was they said, OK, TOESOX is merely descriptive.

So let's register the logo. Actually, I don't think their trademark attorney or whoever filed this application was really thinking about it too much. I think they just kind of stumbled across this, at least judging from what I've seen in the records so far. Anyway, if you look down here, it actually says, "no claim is made to the exclusive right to use toe socks apart from the mark as shown." So what have they done here? They have actually disclaimed the merely descriptive part of this trademark, and that is the only thing that allowed this mark to register.

Now, normally, descriptive terms cannot serve as trademarks because they're not distinctive. And if we let people register descriptive terms as trademarks, it would prevent other people from fairly describing their goods. For example, if somebody else made toe socks, they would not be able to say, hey, we make toe socks. Right. These socks with I don't know if you can really see it here, but they have little cutouts. I mean, to see little cutouts for the toes.

Right. So that's so that you can you can grip the Pilates reformer a little bit better. So they actually had to give up their right to the exclusive use of the words "toe socks" in order to get this registered. But let's go look at something else, too. Now, this second mark, the second application that actually registered, they were actually able to get TOESOX registered, but look at the goods, they're not for socks, they're for sandals.

So they were able to get TOESOX registered, but not for socks, for sandals. Now, what else have they done here? They actually are attempting to register the word TOESOX, the word itself, not just the logo. And they're running into some pushback from the examiner, the examiner notes. So let's look at how they have applied for this. They've applied under 2(f). 2(f) means that your mark has been on the registry long enough such that it has acquired secondary meaning.

So what does that mean? It means that people associate these goods with your brand. So they're alleging that the word TOESOX is now so recognizable that everybody recognizes that these socks come from their company. So what does the examiner have to say about this? Well, the examiner says -- and I agree with the examiner on this one -- in this office action, the examiner says, listen, this term is generic. It is generic for socks with toes. So you're not going to be able to register this, because if we let you register this generic term, it will prevent other people from using the term to fairly describe their trademarks.

And remember, that's not what the trademark registry is for. The trademark registry exists to distinguish one company's goods from another company's goods. It is not meant to be anti-competitive. It is not meant to prevent people from fairly describing their goods and services. Now, if you would like the free resource about things that you can't register as trademarks, go ahead, drop a comment. Just ask for it and I'll send it on over. I'm Angela Langlotz and I go live here on weekdays to talk trademarks and copyrights.

You can find me online at TrademarkDoctor.net. You can also find me here on Facebook at Facebook. Dot com forward slash TrademarkDoctor.net. If you have trademark questions, message me on the TrademarkDoctor.net page and I will answer those in a future live video.