Key TakeawaysA descriptive trademark directly tells customers what a product is or does. A suggestive trademark only hints at it, so customers need a bit of imagination to connect the name to the product. That small difference has a big effect on registration. ● Suggestive marks are “inherently distinctive” and can be registered right away on the USPTO’s Principal Register. ● Descriptive marks are refused unless they’ve acquired distinctiveness, usually shown through years of use, sales, and advertising. ● A common test: if a customer can tell what the product is from the name alone, without any mental leap, the mark is probably descriptive. ● For a new brand, choosing a suggestive, arbitrary, or made-up name makes registration faster and enforcement easier. |
When business owners choose a brand name, they often want one that tells customers exactly what they sell. It feels like good marketing. But from a trademark perspective, a name that simply describes your product is the hardest kind to register and protect.
The line between a “suggestive” name, which the USPTO will usually register, and a “descriptive” one, which it will refuse, is one of the most important distinctions in trademark law. Here’s how it works, with examples.
The Spectrum of Distinctiveness
Courts and the USPTO sort trademarks into five categories, from weakest to strongest. Where your mark falls decides whether it can be registered and how much protection it gets. Our guide to the spectrum of distinctiveness covers each in more detail.
| Category | What it is | Example | Registrable? |
|---|---|---|---|
| Generic | The common name for the product | BAGELS for a bagel shop | Never |
| Descriptive | Directly describes a feature, quality, purpose, or ingredient | CREAMY for yogurt | Only with acquired distinctiveness |
| Suggestive | Hints at a quality, but needs imagination | COPPERTONE for sunscreen | Yes |
| Arbitrary | A real word with no connection to the product | APPLE for computers | Yes, strong protection |
| Fanciful | A made-up word | KODAK, POLAROID | Yes, strongest protection |
What Is a Descriptive Trademark?
A descriptive mark immediately tells customers something about the product: what it is, what it does, what it’s made of, who it’s for, or where it comes from. Examples of terms the USPTO would generally treat as descriptive:
- CREAMY for yogurt
- FAST TAX for tax preparation services
- CHICAGO PIZZA CO. for a pizza restaurant in Chicago (geographically descriptive)
- BEST or PREMIUM for almost anything (laudatory terms are treated as descriptive)
The reason for the rule is fairness to competitors. Every yogurt company needs to be able to call its yogurt creamy. Giving one business exclusive rights in that word would make it harder for others to describe their own products.
When the USPTO finds a mark merely descriptive, it issues a refusal under Section 2(e)(1) of the Lanham Act. Geographically descriptive names get a similar refusal under Section 2(e)(2). See our article on geographically descriptive refusals.
What Is a Suggestive Trademark?
A suggestive mark hints at a quality or benefit of the product without directly describing it. The customer has to use some imagination, thought, or perception to connect the name to what’s being sold. Examples commonly cited as suggestive include:
- COPPERTONE for sunscreen, suggesting a tan without describing the product
- GREYHOUND for bus travel, suggesting speed
- CHICKEN OF THE SEA for canned tuna
- MICROSOFT for software, combining “microcomputer” and “software” into something new
Suggestive marks are considered inherently distinctive, so they can be registered on the Principal Register without any proof of how well customers know them.
How to Tell the Difference
The line isn’t always obvious, and examining attorneys and courts sometimes disagree. These are the questions they ask:
- The imagination test. Does a customer need a mental leap to figure out what the product is? If the name tells them immediately, it’s descriptive. If it takes thought, it’s more likely suggestive.
- The competitor need test. Would other businesses need to use the word to describe their own products? If so, it’s probably descriptive.
- Context matters. The same word can fall in different categories depending on the goods. APPLE is generic for apples, descriptive for apple juice, and arbitrary for computers.
- Combining descriptive words rarely helps. Putting two descriptive words together, like FAST TAX, usually just creates a descriptive phrase. A combination is suggestive only if together the words create a new, unexpected meaning.
Can a Descriptive Mark Ever Be Registered?
Yes, in two ways:
- Acquired distinctiveness (Section 2(f)). If customers have come to recognize the descriptive term as your brand, sometimes called “secondary meaning,” it can be registered on the Principal Register. Five years of substantially exclusive and continuous use is usually accepted as initial evidence, but stronger proof like sales figures, advertising spend, media coverage, and customer surveys may be needed. AMERICAN AIRLINES and BANK OF AMERICA are well-known descriptive names that became strong brands this way. Our article on acquired distinctiveness (2(f)) claims explains the process.
- The Supplemental Register. A descriptive mark that hasn’t acquired distinctiveness yet can be registered on the Supplemental Register. It doesn’t give you all the benefits of the Principal Register, but it lets you use the ® symbol and blocks later confusingly similar applications. See Supplemental vs. Principal Register.
The Supreme Court’s 2020 decision in USPTO v. Booking.com also showed that even a “generic.com” term can be registered if consumers truly see it as a brand. We cover that in our roundup of landmark intellectual property cases.
Choosing a Stronger Brand Name
If you’re naming a new business or product, a few tips:
- Avoid names that just state what you sell or a quality everyone in your industry claims
- Aim for suggestive, arbitrary, or made-up names, which are faster to register and easier to enforce
- Pair a descriptive tagline with a distinctive brand name if you want the name to communicate what you do
- Check availability before you commit. Our guide on how to check if something is trademarked shows you how
Frequently Asked Questions
What is the difference between a suggestive and a descriptive trademark?
A descriptive trademark directly describes a product’s feature, quality, or purpose, such as CREAMY for yogurt. A suggestive trademark only hints at it and requires some imagination, such as COPPERTONE for sunscreen. Suggestive marks can be registered right away, while descriptive marks need acquired distinctiveness.
Can a descriptive trademark be registered?
Yes, if it has acquired distinctiveness, meaning customers recognize it as a brand. Five years of substantially exclusive use is usually accepted as initial evidence. A descriptive mark can also be registered on the USPTO’s Supplemental Register.
What are examples of suggestive trademarks?
Examples commonly cited include COPPERTONE for sunscreen, GREYHOUND for bus travel, CHICKEN OF THE SEA for tuna, and MICROSOFT for software. Each hints at the product without describing it directly.
What are examples of descriptive trademarks?
CREAMY for yogurt, FAST TAX for tax services, and BEST for almost any product are typical descriptive terms. AMERICAN AIRLINES and BANK OF AMERICA are descriptive names that became registrable after acquiring distinctiveness through long use.
Are suggestive marks inherently distinctive?
Yes. Suggestive, arbitrary, and fanciful marks are all considered inherently distinctive, so they don’t need proof of consumer recognition before registration. Descriptive and generic marks are not inherently distinctive.
Not Sure Where Your Brand Name Falls?
The difference between a suggestive and descriptive mark can decide whether your application is approved or refused. Drishti Law can assess your name before you file, and respond to descriptiveness refusals if you’ve already received one. Call 773-234-1139 or book a free consultation.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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