Descriptiveness rejections are one of the main issues to look out for when you file a trademark application to the United States Patent and Trademark Office (USPTO). Other than being too similar to another trademark, descriptiveness rejections are one of the big causes of substantive Office Actions.
We compiled a list of a five brand names that approached this potential without hesitation. At first glance, they are successful, recognizable brands. From a trademark perspective, however, they all share something in common: they contain characteristics that trademark attorneys typically advise clients to avoid. Luckily, there are solutions to many of the issues presented.
Descriptive Brands
1. ChatGPT
The ChatGPT trademark story is a doozy. The brand name is now undeniably well-known, but their attempt at obtaining a trademark has been an epic uphill battle with multiple descriptiveness rejections.
The trouble is, “ChatGPT” tells consumers exactly what the product is – a chat interface that uses a Generative Pretrained Transformer (GPT) model. Trademark law generally does not favor terms that merely describe the products or services being offered. So, the ChatGPT trademark still lingers in the application stage after multiple rejections. As of June 2026, ChatGPT has appealed their rejection and is awaiting a response.
TIP: This case is informative for software brands specifically. There are so many abbreviations and combinations of abbreviations that are possible for software features and types. It’s best to come up with something entirely unique.
2. HomeGoods
HomeGoods is a recognizable brand, but it is also the type of name that would give a trademark attorney serious agita. Why? Because the company sells… home goods. The more directly a name tells consumers what a company is selling, the more difficult it can be to establish trademark rights.
The company managed to pull it off, though. TJX launched the HOMEGOODS brand in the early 1990s. The company abandoned an early HOMEGOODS trademark application after it was rejected. Instead of rushing to file a new application, TJX invested in building their brand over time. Years later, in their second bite at the apple, TJX filed another trademark application for the HOMEGOODS trademark, this time with a 2(f) claim. This strategy no doubt lead to the success of their application. 2(f) claims are a great legal option for descriptive trademarks and are discussed in more depth below.
3. Madewell
Madewell is another great brand name – simple, elegant, with a vintage feel that immediately communicates something positive about the products being sold. Madewell is also not a brand name a trademark attorney would recommend that you adopt, exactly because it conveys information about the quality of the products themselves. Consumers often gravitate toward names that communicate something familiar, while trademark law often favors names that are more distinctive and unexpected.
Madewell worked, though, because it’s a Heritage brand. The brand actually originated in the 30s selling utilitarian workwear. The company obtained a trademark registration in 1973 based on their decades of prior use. Clothing company, J.Crew, purchased the brand in 2006 and brought it back to life as its sister brand. Well-established for years, the company had acquired distinctiveness instead of inherent distinctiveness.
4. Best Buy
Best Buy offers a cautionary tale about being too aggressive when your trademark is descriptive. In the late 1980s, the company wanted to sue a competitor named Best Buy Warehouse for trademark infringement. Best Buy lost their bid after a federal district judge declared that the words “best buy” were generic. After all, Best Buy is a store where people “buy” things and that its the Best Buy would be a quality they would promote about the brand. But, around 2007 – 2010, Best Buy began an extensive effort to prove that the public had come to associate the words “Best Buy” specifically with their store. Finally, a few years later, the USPTO allowed the brand’s federal trademark registrations.
5. GoodPop
GoodPop makes delightful organic and natural ingredient frozen confections. The trajectory of their original trademark application was not so delightful. They make pops, and they of course would describe them as “good”, especially since they’re meant to be a healthier option. After multiple descriptiveness rejections, their lawyers amended the application to be on the Supplemental Register. After a number of years of registration and building up acquired distinctiveness, the brand now enjoys multiple registrations on the Principal Register. More details about the Supplemental Register and how it can help you are below.
How Do You Know If Your Brand Name Is Descriptive?
Trademark law requires a brand name to be distinctive enough to identify a single source of goods or services. Names that merely describe a product, its qualities, features, purpose, or the goods themselves often face significant hurdles because consumers may view them as informational rather than as a source identifier. In some cases, a term can fail entirely as a trademark under Section 45 of the Lanham Act if it does not function as a source identifier at all. Even when a term is not completely barred from trademark protection, a merely descriptive mark may be refused registration unless the owner can show that consumers have come to recognize it as identifying a particular business rather than the product or service generally. Trademarks can either be inherently distinctive, or acquire distinctiveness over time.
Here’s a checklist for how you know your brand might be descriptive. For more details on the range of trademark strength, see our article on the topic at this link.
- Does the name tell customers exactly what the product or service is?
- Does it describe a quality of the product (fast, fresh, premium, creamy, healthy, strong, smart, etc.)?
- Does it describe a feature or function of the product?
- Does it describe the result the customer receives?
- Is it a word that competitors would naturally want to use to describe similar products or services?
- If someone saw the name without knowing the company, would they immediately know what was being sold?
- Does the name primarily describe an industry, profession, location, or type of business?
- Is it made up of common industry buzzwords or marketing phrases?
- Would a customer view the name as information about the product rather than as a brand?
The more times you answer “yes,” the greater the likelihood that the name may face descriptiveness rejections. The strongest trademarks typically do not describe the goods or services directly. Instead, they create a unique association between a name and a source. That distinction is what trademark law is ultimately designed to protect. Here is another useful guide.
| Trademark Type | Example | Can It Be Registered? |
|---|---|---|
| Fanciful / Coined | Kodak, Exxon | Strongest |
| Arbitrary | Apple (for computers) | Strong |
| Suggestive | Netflix | Usually registrable |
| Descriptive | ChatGPT (chat-based GPT tool) | Weak, and would require proof of acquired distinctiveness |
| Generic | “AI Chatbot” | Never registrable |
What If You’ve Already Built a Business Around a Descriptive Name?
Ideal legal advice cannot always be applied to real life. The reality is that some startups launch a brand without realizing it might cause trademark issues down the line. Regardless of that, it is their brand they have chosen and they’ve invested heavily in it. Luckily, we have some solutions that help repair the root of the descriptiveness rejection and can secure long term rights over many descriptive trademarks. The key for companies is to build acquired distinctiveness using these available tools.
1. Filing A Logo Application Can Help Avoid A Descriptiveness Rejection
Filing a trademark application with your logo and another one for the actual words (standard character mark) of your brand is recommended. Sometimes if the standard character mark is just too descriptive, putting it in logo form with a solid design can help distinguish it. A stylized logo mark may be registrable even where the wording itself presents challenges. This is a great strategy to utilize in conjunction with some of the below options.
2. Amending Your Application to the Supplemental Register is a Good Long Term Strategy to Avoid A Descriptiveness Rejection
If you file an application for your brand name and get a merely descriptive rejection, amending to the Supplemental Register is a quick and easy fix. You can enjoy many of the benefits of registration while spending time building your trademark rights with consistent use and solid marketing. After about 5 years of use, you can file a new application for the same trademark for the Principal Register with a 2(f) claim.
What Is the Supplemental Register? The Supplemental Register is often used as a stepping stone for businesses that have not yet built enough consumer recognition to support registration on the Principal Register. A trademark application that gets a descriptiveness rejection a few times can be amended from the Principal Register to the Supplemental and end up getting approved.
While Registration on the Supplemental Register does not provide all of the benefits of a Principal Register registration, it still offers several important advantages.
For example, a Supplemental Register registration allows the trademark owner to use the federal registration symbol (®), appears in USPTO search records, and can be cited by examining attorneys against later-filed applications for confusingly similar marks.
The tradeoff is that Supplemental Register registrations do not enjoy many of the presumptions associated with Principal Register registrations. For example, they cannot become incontestable, do not provide prima facie evidence of the validity of the mark, and generally offer weaker protection in enforcement proceedings. For many businesses, however, the Supplemental Register is not the end goal, but a temporary stop along the way.
A common strategy is to secure a Supplemental Register registration while continuing to use and promote the brand in the marketplace. Over time, as consumers begin to associate the mark with a single source, the owner may develop the evidence necessary to establish acquired distinctiveness.
TIP: Amendment to the Supplemental Register requires use in commerce.
3. Filing a 2(f) claim of Acquired Distinctiveness is a Classic Way to Avoid A Descriptiveness Rejection
After about 5 years of consistent use, many companies will qualify for a claim of Acquired Distinctiveness under Section 2(f). This would require exclusive use, advertising, media recognition, and consumer association.
A Section 2(f) claim is essentially an argument that, although a mark may be descriptive, consumers have come to recognize it as identifying a single source of goods or services. In other words, the trademark owner is arguing that the mark has developed “secondary meaning” through use in the marketplace. In many cases, five years of substantially exclusive and continuous use may be sufficient to support a Section 2(f) claim.
Not sure whether your brand name is too descriptive? SPEAK DIRECTLY TO ONE OF OUR TRADEMARK ATTORNEYS
We can usually spot major descriptiveness risks before you spend money on logos, websites or marketing. We guide startups, entrepreneurs, and growing businesses through the entire trademark registration process, from clearance searches to Office Action responses and enforcement. We offer flat-fee trademark services, clear communication, and strategic legal insight to help you protect your brand with confidence.
Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094.
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