The Future of Descriptive Marks: Is There Reason to Avoid Them?

Trademarks and service marks that describe the nature or qualities of products associated with them are often favored by marketing directors because they do not require great expenditures of marketing resources to form an immediate mental link in the minds of consumers between the mark and the product or its characteristics. The well-known downside to those marks, generally called "descriptive marks," is that they are more difficult to protect, especially initially, than "arbitrary" or "fanciful" marks such as Exxon® for petroleum products or Apple® for computers. These marks are considered inherently distinctive because they do not inherently inform the consumer about the nature or use of the product. Notwithstanding these difficulties, one need only consider marks such as Windows® or Holiday Inn® to recognize that some descriptive marks are very strong. This is because they have acquired distinctiveness in the marketplace such that consumers now associate the products identified