Descriptiveness rejections are one of the main things 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 few brand names that approached this potential without hesitation, so we can talk about what happened and how to go about it.
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.
What is a Merely Descriptive Rejection?
Trademark law generally 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.
While the advice we give is to avoid adopting this sort of brand name for your company, the reality is sometimes we like what we like. Other times, a founder has already put significant energy and resources into a brand name before realizing it might be descriptive. We collected a handful of examples of trademarks that any good trademark attorney would probably tell you to avoid. They communicate qualities of the product itself and tell consumers exactly what the business sells, yet each of these brands managed to overcome trademark obstacles and build significant brand value.
1. HomeGoods
HomeGoods is a recognizable brand, but it is also the type of name that would make many trademark attorneys pause. Why? Because the company sells… home goods. Trademark law generally does not favor terms that merely describe the products or services being offered. 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 left an early HOMEGOODS trademark application abandoned after a rejection. Instead of rushing to file a new application, TJX invested in building their brand overtime. The company ultimately secured trademark protection for various HOMEGOODS-related marks in 2002. In their second bite at the apple, TJX filed the application with a 2(f) claim, which no doubt lead to the success of their trademark.
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.
2. Madewell
Madewell is a 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.
They were able to pull it off 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.
3. 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.
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. Like we see in the GoodPop example, 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. It is 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. So the strategy would be to hang out on the Supplemental Register for awhile, then file another application after about 5 years.
This is exactly what GoodPop did, who now enjoys multiple registrations on the Principal Register.
4. ChatGPT
The ChatGPT trademark story is a doozy. The brand name is now undeniably well-known, but their experience obtaining a trademark has been an epic uphill battle with multiple descriptiveness rejections.
In plain terms, “ChatGPT” tells consumers exactly what the product is – a chat interface that uses a Generative Pretrained Transformer (GPT) model. Adding the word “chat” did not make the trademark distinctive enough. 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.
5. [Your Brand Name Here]?
Let’s hope not! But if you did end up developing your brand around something that could be weaker due to descriptiveness, there are usually strategies we can adopt to get your trademark rights squared-away without suffering from a final descriptiveness rejection. Before we discuss solutions, 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 brands get started without realizing the trademark they have chosen might cause 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.
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.
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.
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.
INTERESTED IN LEARNING MORE ABOUT Avoiding Descriptiveness Rejections? SPEAK DIRECTLY TO ONE OF OUR TRADEMARK ATTORNEYS
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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