This is Part 2 of a 5-part series on merely descriptive refusals. Part 1 covered what the refusal means and why the law imposes it. This post covers how examining attorneys build the evidentiary record that supports it.
The Burden Starts With the Examiner
Before an applicant needs to respond to anything, the examining attorney must establish a prima facie case that the mark is merely descriptive. That showing must be grounded in actual evidence. A bare assertion that a word sounds descriptive is not sufficient. The examiner must point to something in the record that demonstrates how the relevant purchasing public would understand the mark when it is used in connection with the specific goods or services identified in the application.
This matters for practical reasons. The refusal is not an opinion. It is a legal argument backed by specific evidence, and the strength or weakness of that evidentiary record is itself a legitimate target for the response. A prima facie case built on thin evidence is more vulnerable than one built on strong, product-specific sources.
The Evidence Toolkit
Examiners draw from a predictable set of sources. The Trademark Manual of Examining Procedure makes clear that evidence of a term's descriptive meaning to the relevant purchasing public may come from any competent source. In practice, that means the following.
Dictionary definitions. This is the starting point for most refusals. If a dictionary defines a word in the mark in a way that directly relates to the goods or services, that definition will appear in the office action. Examiners use standard dictionaries, specialized trade dictionaries, and industry glossaries. The definition does not need to be an exact match to the goods. It only needs to show that the term describes one significant quality, attribute, or characteristic of them.
Internet evidence. Examiners search the web and collect screenshots from websites, product listings, and industry publications that use the mark's words in a descriptive context. If third parties in the relevant industry use the term to describe products or services like the applicant's, that usage goes into the record. Evidence of how real people in the market actually use language is treated as highly probative.
Trade publications and news articles. LexisNexis and similar research tools allow examiners to find articles using the term descriptively across a range of publications. A well-chosen article from a trade journal showing that the term functions as a descriptor in the relevant industry can anchor a prima facie case on its own.
The applicant's own materials. Examining attorneys review the applicant's website, product descriptions, press releases, and specimens submitted with the application. If the applicant's own copy uses the words in the mark to describe what the product is or does, that evidence will appear in the office action. Copy written to explain the product to customers can read very differently when a trademark examiner looks at it through a descriptiveness lens.
The Analysis Must Be Product-Specific
Whatever evidence the examiner assembles must be evaluated against the specific goods and services in the application. The word IVORY means something different when applied to soap versus products made from elephant tusks. APPLE is arbitrary for computers but would be descriptive for fruit. SPEEDY might be suggestive for legal services but merely descriptive for a courier company.
This requirement cuts in both directions. Evidence drawn from a completely different industry may not be persuasive when it comes to the specific goods in the application. When the examiner's evidence does not closely match the actual goods and services, that gap is a legitimate basis for challenge in the response.
The Federal Circuit addressed the product-specific principle in In re Oppedahl and Larson LLP: A mark may be merely descriptive even if it does not describe the full scope of the applicant's goods or services. It is enough that the term describes one significant feature or function. That principle operates symmetrically. Evidence of descriptive use in a different context, for a different product, may not satisfy the prima facie standard either.
Compound Terms and Combined Words
Many descriptiveness refusals target marks that combine two or more words, each of which might be descriptive on its own. The question in those cases is whether the combination creates a new, non-descriptive commercial impression, or whether each component retains its descriptive character and the combination is therefore no more distinctive than its parts.
When components retain their descriptive meaning, the combination is refused. SNAP SIMPLY SAFER was held merely descriptive of medical syringes because each element independently described a feature of the goods: SNAP described the mechanism, SIMPLY conveyed ease of use, and SAFER described the safety benefit. Combining them added nothing distinctive. PATENTS.COM was refused for the same reason. PATENTS described the subject matter and .COM indicated internet delivery, and together they told consumers exactly what the software did.
The result changes when combining words creates something incongruous or unexpected. SUGAR AND SPICE was held not merely descriptive of bakery products because the phrase created a catchy expression that did not directly describe the contents of the goods. SNO-RAKE for a snow removal tool was found not merely descriptive because rakes are not naturally associated with snow removal, and the combination required a moment of thought. That pause is enough to push a mark toward the suggestive end of the spectrum.
Phonetic Equivalents and Creative Spellings
A slight spelling variation on a descriptive word does not rescue a mark from a descriptiveness refusal. The USPTO evaluates the commercial impression a mark creates, not the precise letters on the page. SHARPIN was held merely descriptive of knife blocks with built-in sharpeners because it is the phonetic equivalent of SHARPEN. URBANHOUZING was treated as the equivalent of URBAN HOUSING. BREADSPRED was held merely descriptive of jams and jellies even though the compound spelling appeared in no dictionary.
The underlying principle is consistent: if the consumer reads or hears the mark and perceives a descriptive term, the creative spelling is legally irrelevant.
Doubt Resolves in the Applicant's Favor
When evidence is genuinely mixed and the mark could reasonably be read as either descriptive or suggestive, doubt is supposed to be resolved in the applicant's favor. The Federal Circuit and the TTAB have both stated this repeatedly. The reasoning is that marks that are not clearly descriptive should be published for opposition, where interested third parties can challenge registration in a formal proceeding, rather than refused outright at the examination stage.
A response that identifies genuine ambiguity in the examiner's record and articulates why imagination is required to connect the mark to the goods can succeed even in close cases.
Part 3 of this series covers acquired distinctiveness: what it requires, what evidence the USPTO expects, and when it is a realistic path to registration for a descriptive mark.
Five Dogs Law handles USPTO office action responses for trademark applicants. If your application received a merely descriptive refusal and you want a lawyer to evaluate the examiner's evidence, book a free consultation.
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