Jason K. Levine, Contesting the Incontestable: Reforming Trademark’s Descriptive Mark Protection Scheme, 41 Gonz. L. Rev. 29 (2005).[PDF] [Westlaw] [LexisNexis]
Federal trademark law in the United States is designed to help consumers, protect business owners, and promote investment while removing no more from the public domain than is absolutely necessary. Courts addressing trademark questions divide the universe of possible marks into four categories: arbitrary or fanciful, suggestive, descriptive, and generic. This article focuses on descriptive trademarks. It argues that the current level of protection afforded these marks fails to meet the goals of this federal doctrine in all respects, and must be reformed to provide better protection for small business owners, consumers, and the public domain.
A variety of problems plague the present method by which descriptive marks are regulated. Consider the following scenario: under the existing schema, descriptive marks may essentially be warehoused with the United States Patent and Trademark Office (“PTO”) for five or more years before registration on the Principal Register. Furthermore, descriptive marks may display the (R) symbol despite only being “capable” of receiving the protection the (R) generally symbolizes. Accordingly, these marks give the impression of having received stronger protection than they have actually been afforded. Additionally, descriptive marks can prevent other marks from being registered on the Principal Register, despite never acquiring “secondary meaning.” In other words, the first applicant to successfully register a descriptive mark on the Supplemental Register finds her mark elevated to a position that has become increasingly difficult for competitors to reach, despite failing to be inherently distinctive. Thus, the current scheme appears to have adopted the notion that first to register, not necessarily first to use a descriptive mark, deserves the most protection…. Read More