Why Descriptive Marks Are Hard to Protect

Protecting a brand name through trademark law requires more than simply picking a term that describes the goods or services. The basic principle in trademark law is that a mark must identify and distinguish the source of goods or services rather than merely describe them. When a mark directly conveys information about a product or its characteristics—such as “Creamy” for yogurt—courts and trademark offices consider it descriptive and usually refuse registration. To understand why descriptive marks are hard to protect, it is useful to look at how trademark law classifies marks, why descriptive terms are seen as weak, and what evidence is needed to obtain protection.

The trademark distinctiveness spectrum

Trademark law divides marks into categories based on their degree of distinctiveness. At the strongest end are fanciful marks (completely made‑up words like Exxon or Kodak) and arbitrary marks (real words used in an unrelated context, such as Apple for computers). Both are inherently distinctive and readily registrable. Suggestive marks hint at a quality without directly describing it—Coppertone for sun‑tanning products suggests skin will look like copper. Suggestive marks are also inherently distinctive and enjoy robust protection.

At the other end of the spectrum are descriptive and generic marks. A descriptive mark “merely describes some aspect of [the goods or services] without identifying or distinguishing the source”. Examples include “Creamy” for yogurt or “Bed & Breakfast registry” for lodging services. Generic terms are the common names of products and are never protected. Because descriptive marks tell consumers what the goods are, they lack the distinctiveness needed to function as a source identifier. As the World Intellectual Property Organization (WIPO) explains, descriptive terms have “little distinctiveness and so are not eligible for protection unless…distinctive character has been established over time through extensive use in the marketplace”. This requirement is sometimes referred to as acquired distinctiveness or secondary meaning.

Why descriptive marks are weak

1. They directly describe the goods or services

The fundamental reason descriptive marks are hard to protect is that they “merely describe some feature of the product”. Trademark law aims to prevent consumer confusion by allowing one company to own a specific brand name. However, if a descriptive term is monopolized, competitors would be unable to describe their own products. For example, WIPO notes that the trademark SWEET for chocolates would be rejected because it would be unfair to give exclusivity over the word “sweet” when all chocolate manufacturers need it to describe their products. Similarly, laudatory terms like “Rapid” or “Best” are considered descriptive and likely to be refused.

2. They lack inherent distinctiveness

Inherent distinctiveness means a mark can immediately identify a single source without needing additional context. The EU Intellectual Property Office (EUIPO) explains that a sign is not distinctive if it “is descriptive of the goods and services themselves or of the characteristics of those goods and services (such as their quality, value, purpose or provenance)”. Because descriptive marks fail this test, they fall at the weaker end of the distinctiveness spectrum. The EUIPO also notes that a mark can have a low degree of distinctiveness if it alludes to characteristics of goods; but when a sign directly describes the goods, its distinctiveness is “completely eliminated”.

3. Competition policy and fairness

Granting exclusive rights in descriptive terms would obstruct fair competition by preventing other traders from accurately describing their goods. WIPO emphasises that “descriptive trademarks cannot be owned by one company to the exclusion of others”. The U.S. Patent and Trademark Office (USPTO) similarly states that weak trademarks — including descriptive and generic marks—are “hard to protect against competitors”. They may not be registrable because they do not signal a single source. Protecting such marks could deprive the public of descriptive vocabulary and run afoul of free speech principles. Courts, therefore, require proof that the public associates the descriptive term with a particular source before granting exclusive rights.

4. Risk of genericide and loss of rights

Even when a descriptive mark acquires distinctiveness, it remains at risk of becoming generic if the public starts using it as the common name for the product. WIPO warns that strong trademarks can “lose their status and become generic by improper usage”. Because descriptive marks already border on generic, they face a greater risk of genericide. For instance, if the public uses the brand name as the name of a product—like “Aspirin” or “Thermos”—the mark may lose protection. This risk discourages heavy investment in descriptive marks since the benefits can be lost if the mark becomes generic.

When descriptive marks can be protected

Acquired distinctiveness (secondary meaning)

A descriptive mark can become protectable if it acquires secondary meaning. Secondary meaning exists when the consuming public has come to recognize that the descriptive term identifies goods or services from a particular source. The USPTO notes that descriptive trademarks are “only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years”. WIPO explains that a descriptive trademark acquires secondary meaning if consumers recognize that the descriptive name “is a trademark that refers to your products,” typically as a result of widespread use or a major marketing campaign. For example, the mark HEALTHY CHOICE for prepared meals is descriptive but has been registered in the United States after the public came to associate the term with a particular producer. Similarly, the slogan THE GREATEST SHOW ON EARTH was protected because the owner provided evidence of over a century of use and marketing.

Evidence required to prove secondary meaning

Proving acquired distinctiveness is challenging and often expensive. WIPO lists various types of evidence that may be needed: invoices, order slips, bills, advertising materials, consumer surveys, and testimony from trade associations. The EUIPO requires that the evidence demonstrate that consumers “have been exposed to widespread use of, and become accustomed to, trade marks” containing the descriptive element. The applicant must show that the mark is recognized as a source identifier throughout the entire territory where protection is sought.

Strategies to strengthen descriptive marks

Though descriptive marks start from a weak position, businesses sometimes choose descriptive names for marketing reasons; customers immediately understand what the product is. In these cases, several strategies can help increase protectability.

1. Add distinctive elements – Combining a descriptive term with a distinctive logo, graphic, color, or stylized font can help the overall mark gain distinctiveness. WIPO suggests using a special script, specific colours, or graphical elements. For example, the NIKE swoosh was initially too simple to register on its own, but after extensive marketing, it gained secondary meaning and was registered. Adding a unique design may allow the overall composite mark to be registered while the descriptive word remains disclaimed.
2. Use distinctive components – Pairing a descriptive term with a fanciful or arbitrary word can create a registrable compound mark. For instance, COPPERTONE combines “copper” (suggestive) with “tone,” producing a suggestive mark rather than a purely descriptive one. The EUIPO notes that a sign may have a low degree of distinctiveness if it alludes to the goods but is “imaginative or clever” enough to maintain distinctiveness.
3. Develop secondary meaning – If a descriptive mark is already in use, invest in long-term marketing and document evidence of use. Consumer surveys, sales figures, and advertising expenditures can help show that the public associates the mark with a single source. This process can take years and is often more expensive than choosing a distinctive mark from the outset.
4. Avoid laudatory and generic words – When developing a brand, avoid words that merely praise (e.g., “Best,” “Classic,” “Innovative”) or that simply name the product category. WIPO states that laudatory terms are likely to be refused unless they form part of an otherwise distinctive mark. Similarly, generic terms can never be protected and will lead to rejection.

Implications of weak protection

Because descriptive marks are weak, several consequences follow:

• Limited enforcement power – Even if a descriptive mark is registered, its scope of protection is narrow. Competitors can often use similar or identical descriptive words without infringement. The USPTO warns that weak trademarks “have a lot more competition” and competitors can use marks similar to a weak mark “and not be considered to infringe”.
• Higher risk of dilution and genericide – A descriptive mark that gains some distinctiveness may still be used generically by the public, leading to loss of exclusivity. Improper use (e.g., as a noun rather than an adjective) can cause a mark to become generic.
• Uncertainty in registration – Because examiners and courts may disagree about whether a mark is descriptive, the process of obtaining registration can be unpredictable. What qualifies as descriptive in one jurisdiction may be considered suggestive in another. WIPO observes that marks considered protectable in some countries may be considered descriptive in others.
• Costly evidence requirements – Building secondary meaning requires significant time and resources. Evidence must cover the relevant territory and show that consumers see the term as a brand name. For pan‑European protection, evidence is needed for each national market, making the process particularly burdensome.