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Matter is not considered a Mark if it “merely describes” the goods or services on or in connection with which it is used, and a “descriptive Mark” is not registrable on the Principal Register. The main reasons for not protecting descriptive marks are to:

  1. prevent the owner from inhibiting competition in the sale of goods; and
  2. enhance the public’s freedom to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. [In re Abcor Development Corp., 588 F.2d 811, 813; 200 USPQ 215, 217 (C.C.P.A. 1978)].

Examples of descriptive marks are:

  • APPLE PIE held merely descriptive of potpourri (In re Gyulay, 820 F.2d 1216; 3 USPQ2d 1009 (Fed. Cir. 1987);
  • BED & BREAKFAST REGISTRY held merely descriptive of lodging reservation services (In re Bed & Breakfast Registry, 791 F.2d 157; 229 USPQ 818 (Fed. Cir. 1986));
  • MALE-P.A.P.TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer (In re MetPath Inc., 223 USPQ 88 (TTAB 1984); and
  • COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing (In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).

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