Under U.S. trademark law, a mark that is merely descriptive of the goods or services it is being used to market or sell is not registrable on the Principal Register without demonstrating secondary meaning, i.e., that consumers have come to associate the mark with the source of the goods or services.
One strategy I haven’t written about before, which marketers like to use for general purposes but also can occasionally help with descriptiveness problems, is to slightly alter a known term. This could consist of changing the spelling of a word (e.g., NU-ENAMEL and QUIK-PRINT) or dropping a letter from a word (e.g., SNO-RAKE).
This is the approach SFS Intec (SFS) took for its SOL-R solar fastening system.
SFS filed a U.S. trademark application for SOL-R for goods including “flashing panels, and tiles incorporating metal frames for solar panels,” “metal cantilevered brackets for solar panels,” “ground supports of metal for solar panels,” “non-metal roof cladding and roofing elements for photovoltaic elements,” and “roofing…incorporating solar cells.”
The trademark examining attorney found that SOL-R is simply a novel spelling of the word “solar” and refused registration for being merely descriptive of the goods. SFS appealed to the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board).
In a recent decision, the Board affirmed the refusal and held the SOL-R trademark merely descriptive.
As it starting point, the Board agreed that SOL-R is an alternative spelling of the word “solar” and would be perceived as such by consumers (and pronounced the same way).
The Board found, based on the goods listed in the application and some third-party websites in the record that also used “Sol-r” for solar-related goods, that the trademark is descriptive:
Based on the identification of goods and the excerpts from the third-party websites mentioned above, we find that the proposed mark SOL-R is merely descriptive of a significant feature or characteristic of Applicant’s identified goods. No imagination is required by a purchaser or user to discern that the mark, when applied to the identified goods, describes products that are used on or in connection with solar panels and installations, and roofing that incorporates solar cells.
The Board gave no weight to the argument that the intentional misspelling of the word “solar” should save the mark and render it distinctive:
A slight misspelling of a merely descriptive word, such as “sol-r,” generally does not turn the descriptive word into an inherently distinctive trademark….Thus, Applicant’s proposed mark SOL-R does not become an inherently distinctive mark by the slight misspelling of the commonly used and understood descriptive term “solar.”
So, if considering a descriptive term as a trademark, better to spell it right and use another strategy. Or just choose a different mark altogether.