The Perils of a "Highly Descriptive" Trademark

On Wednesday, April 8, 2025, the Federal Circuit affirmed the Trademark Trial and Appeal Board's ("TTAB") ruling that Heritage Alliance's trademarks for "iVoterGuide" and "iVoterGuide.com" are highly descriptive and not protectable, rejecting a challenge to the American Policy Roundtable's trademark applications for "iVoters" and iVoters.com". This case highlights how difficult it is to determine when a descriptive mark is distinctive enough to receive protection.

A term that immediately conveys knowledge of a quality, feature, function or characteristic of its goods or services is considered to be merely descriptive and is not protectable. However, all hope is not lost. A descriptive trademark may have rights if the trademark is deemed to have acquired distinctiveness. This means that if the public can come to associate the descriptive term with a specific source or brand, and not just its descriptive meaning, the owner will have trademark rights.

Below are examples of how a descriptive trademark can acquire distinctiveness:

Extensive and Continuous Use: A demonstration that the term has become a source identifier by showing that the term is used consistently and substantially exclusively in commerce for a period, often five (5) years or more.

Consumer Recognition: A demonstration that consumers recognize the term as a brand, not just a description of the product or service.

Evidence of Secondary Meaning: Evidence can be proven by submitting sufficient proof of investments in advertising/marketing and sales, as well as, statements from consumers testifying to the trademarks reputation and recognition.

Section 2(f) Claim: An applicant for a trademark registration may make a claim of acquired distinctiveness and present evidence of secondary meaning as described above.

Principal Register: Once distinctiveness is established, a descriptive trademark can be registered on the Principal Register, providing the same protections available to other registerable trademarks.

in this case, Heritage Alliance presented evidence of continuous use for more than five years before the date of first use by American Policy Roundtable, and three declarations from volunteers who helped make Heritage Alliance's voter guides who stated that they associated the trademark with Heritage Alliance. The TTAB and Federal Circuit found that this evidence was not enough. Unfortunately, the decision does not make it clear that more evidence would have changed the result. For example, if Heritage Alliance had survey evidence of customers indicating that they perceived the trademarks in the marketplace as being associated with Heritage Alliance.

This is a cautionary tale noting that even though the trademarks were used as trademarks, if the evidence does not yield a determination the terms are distinctive (even with five-plus years of use), the user does not have a trademark; he has no preexisting trademark rights.