This is Part 4 of 5 in a series of blog posts on mere descriptiveness in trademark law. Part 1 explained what mere descriptiveness means. Part 2 covered how examiners build the evidentiary case. Part 3 covered acquired distinctiveness and the Supplemental Register. This post covers how to respond once the refusal arrives.
The Deadline and What It Means
An Office Action containing a merely descriptive refusal sets a three-month deadline for response. That deadline can be extended up to six months total by paying an extension fee. A failure to respond on time results in the application going abandoned, which means all filing fees are forfeited and the applicant loses the filing date.
The filing date matters because it determines priority. An abandoned application loses the constructive use date it established, which can affect the applicant's ability to block later-filed applications by others.
What the Response Must Do
A response to a merely descriptive office action must either overcome the refusal, amend the application in a way that resolves it, or both. A response that simply disagrees without legal argument or supporting evidence will not be sufficient. The examining attorney is looking for a substantive engagement with the grounds stated in the office action.
The available approaches are not mutually exclusive. A response may argue on multiple grounds: contesting the descriptiveness finding on the merits, presenting a Section 2(f) claim in the alternative, and offering an amendment to the Supplemental Register as a further alternative if the primary arguments are not accepted. Presenting alternative grounds in the same response does not waive the primary argument, and offering the Supplemental Register amendment conditionally is a common practice.
Arguing That the Mark Is Suggestive, Not Descriptive
The first line of attack is contesting the refusal directly: arguing that the examiner misclassified the mark and that it is suggestive rather than merely descriptive. This argument requires showing that a consumer encountering the mark would need to exercise imagination, thought, or perception to understand the connection between the mark and the goods or services.
The evidentiary strategy here involves attacking the record the examiner relied on and building a counter-record. If the dictionary definitions cited apply to a different industry or a different context than the applicant's goods, that misalignment should be pointed out with specificity. If the internet evidence involves uses by parties in an unrelated field, or uses that postdate the filing date, those weaknesses should be identified. If there are third-party registrations on the Principal Register for marks with the same or similar words in the same product category, those registrations are relevant: the USPTO should not simultaneously maintain that a term is merely descriptive and allow registrations of the same term to stand without explanation.
The incongruity principle discussed in Part 1 is a useful tool here. In re Tennis in the Round, In re Shutts, and In re Vienna Sausage Mfg. Co. all illustrate marks where the unexpected combination of words created a cognitive pause that placed them on the suggestive side of the line. If the mark at issue involves a similar unexpected pairing, those cases provide direct precedential support.
It is also worth reviewing the examining attorney's evidence carefully for what it does not include. A thin record consisting of a handful of dictionary entries and a few website screenshots may not satisfy the prima facie burden, particularly when the mark involves a compound term, a phonetic variation, or an unusual word combination. Identifying what the record is missing is as important as countering what it contains.
Claiming Acquired Distinctiveness Under Section 2(f)
If the mark is descriptive but has been in use long enough to have developed secondary meaning, a Section 2(f) claim should be presented alongside the suggestiveness argument or as an alternative to it. The evidentiary requirements are covered in detail in Part 3 of this series. In the context of a response, what matters is assembling that evidence in a form the USPTO will credit.
The submission should include: a declaration by the applicant attesting to the length and exclusivity of use, supported by documentation; sales and advertising data; any consumer declarations available; and any third-party media coverage or other evidence of public recognition. For marks that are highly descriptive, the bar is correspondingly higher, and the submission needs to reflect that.
The five-year continuous use presumption under Section 2(f) does not substitute for evidence in cases where the mark is highly descriptive. The examiner can and often will request additional corroboration even when the five-year threshold has been met. Planning for that request in advance, rather than treating the presumption as automatic, is the more reliable approach.
Amending to the Supplemental Register
If neither the suggestiveness argument nor the Section 2(f) claim can be made with confidence, amending the application to seek registration on the Supplemental Register is a practical alternative. The Supplemental Register accepts marks that are capable of distinguishing goods or services, even if they have not yet acquired distinctiveness. A merely descriptive mark ordinarily qualifies.
The tradeoffs of Supplemental Register registration are covered in Part 3. For purposes of the response, the key point is that this option should be offered conditionally, meaning only if the examining attorney is unwilling to approve the application for the Principal Register based on the primary arguments. Offering the amendment conditionally preserves the applicant's position on the suggestiveness and Section 2(f) arguments and does not constitute a concession that the mark is descriptive (although some do feel as though it does).
If the Examiner Maintains the Refusal
When the examining attorney issues a final refusal maintaining the descriptiveness rejection, the applicant has several options. The applicant can file a request for reconsideration presenting new arguments or evidence not previously submitted. Filing a request for reconsideration does not by itself extend the time to appeal, so the procedural rules must be followed carefully.
The applicant can also appeal to the Trademark Trial and Appeal Board. A TTAB appeal involves full briefing on the legal and factual issues raised by the refusal, and the Board will review the examining attorney's decision de novo on legal issues. TTAB proceedings take time, typically well over a year from initiation to decision, but they provide a meaningful second look at close cases.
If the TTAB affirms the refusal, the applicant can seek judicial review in federal district court or in the Court of Appeals for the Federal Circuit. Federal court review of trademark refusals is available but is used relatively rarely in purely descriptiveness disputes, given the cost and the time involved.
The Practical Takeaway
A merely descriptive office action is not a dead end. The response period is the critical window, and the quality of the response determines what options remain open afterward. A response that makes specific, well-supported arguments and offers alternative positions where appropriate gives the applicant the best chance of overcoming the refusal at the examination stage, and preserves the strongest possible record for appeal if needed.
Part 5 of this series moves from procedure to doctrine, examining the case law that has defined where the line between descriptive and suggestive marks actually falls and what those decisions mean for evaluating a mark before filing.
Five Dogs Law handles trademark prosecution and office action responses. If your application received a merely descriptive refusal and you want an attorney to evaluate the response strategy, book a free consultation.
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