TTAB on Descriptiveness: 2024–2025 Decisions and How to Respond
The line between a descriptive term and a protectable trademark is one of the most contested boundaries in trademark law. In 2024, the TTAB issued four precedential decisions that help define where that line falls.
GleanMark Research analyzes 14 million USPTO trademark records to surface filing, prosecution, and TTAB trends.
Updated October 19, 2026
This is Part 3 of our series on the TTAB's 30 precedential decisions from 2024. Read Part 1 on Likelihood of Confusion →
The line between a descriptive term and a protectable trademark is one of the most contested boundaries in trademark law. In 2024, the TTAB issued four precedential decisions that help define where that line falls. Three apply the Section 2(e)(1) bar on merely descriptive marks; the fourth asks what it takes to prove that a color mark has acquired distinctiveness.
Understanding these decisions is crucial whether you're naming a new brand, prosecuting an application, defending against a descriptiveness refusal, or challenging a competitor's application.
The Spectrum of Distinctiveness
Before diving into cases, let's review the distinctiveness spectrum:
- Fanciful (strongest): Made-up words (KODAK, XEROX)
- Arbitrary: Real words with no connection to goods (APPLE for computers)
- Suggestive: Hints at qualities but requires imagination (NETFLIX)
- Descriptive: Directly describes features, qualities, or characteristics
- Generic (no protection): The common name for the product itself
Descriptive marks can only be registered on the Principal Register with proof of acquired distinctiveness (also called "secondary meaning"): evidence that consumers associate the term with your brand, not just the product description. The other route is the Supplemental Register.
Decision 1: Block Puzzle App Icon - Visual Descriptiveness
Case: Precedential No. 30, Hangzhou Mengku Technology Co., Ltd and Fuzhou Mengku Technology Co., Ltd v. Shanghai Zhenglang Technology Co., Ltd, Opposition No. 91272143 (December 30, 2024) Outcome: Opposition sustained; the block puzzle icon was held merely descriptive of computer game software
What Happened
Shanghai Zhenglang Technology applied to register the app icon for its Wood Block Puzzle 3D game (see it here) for computer game software. The icon shows pale wooden blocks on a dark grid inside a wood-grain border, with a T-shaped piece in a blue glow.
The examining attorney approved the icon for publication. Two competing game developers that publish a block puzzle game of their own then opposed it; by trial, their only remaining claim was that the icon is merely descriptive.
The TTAB's Analysis
The Board sustained the opposition. A picture can be as descriptive as a word, and this icon immediately told consumers that the product is a block puzzle game.
Key points:
- Most of the icon's elements came straight from the game: pale blocks on a dark grid, a brown border, and see-through blocks in the same shape as the floating piece
- Nothing in the record showed the blue glow in the game, but other block puzzle icons on Google Play commonly put a glow around the active piece, so it added nothing distinctive
- Small changes in tint, a curved border and a blue glow were "hardly sufficient to render the design distinctively stylized or fanciful"
- Other registered app icons carried little weight; most had nothing to do with block puzzle games
Why It Matters
This is not a new rule: the Board said "these concepts are not new" and cited a 1983 decision holding a cue stick and ball merely descriptive of billiard parlor services. What is new is the setting. If your logo or design mark or app icon shows your product in use, competitors can challenge it as descriptive, even after the examining attorney has approved it.
Practical tip: Build design marks from elements that are not taken from the product and are not common among competitors' designs. Here, minor changes to tint, border shape and glow color were not enough.
Decision 2: KORN FERRY ARCHITECT - Disclaimer Reversed
Case: Precedential No. 13, In re Korn Ferry (June 27, 2024) Outcome: "ARCHITECT" disclaimer requirement reversed
What Happened
Korn Ferry applied to register KORN FERRY ARCHITECT for executive search, human resources consulting and related services, plus online HR software. The examining attorney required it to disclaim ARCHITECT (that is, give up any claim to exclusive rights in that word on its own) as merely descriptive, on two theories: Korn Ferry may serve architects, and "architect" is an HR term of art.
The TTAB's Analysis
The Board reversed. It first rejected two of Korn Ferry's arguments: eight registrations of other Korn Ferry marks containing ARCHITECT without a disclaimer did not bind the Board, and the mark was not unitary, because the company name is separable from ARCHITECT. But the examining attorney's evidence fell short:
- Nothing in the mark, the services or Korn Ferry's specimen showed that the services were primarily directed to professional architects. The specimen used "architect" figuratively, for someone who plans or organizes something
- The web pages used "architect" loosely or figuratively, several said "architecture" instead, and none showed that "architect" names a defined position in human resources
- Given the "fine line between suggestive marks and descriptive terms," the Board resolved its doubt in favor of finding ARCHITECT suggestive
Why It Matters
Context matters enormously. A word that's descriptive in one context may be suggestive or arbitrary in another. The examining attorney has to prove that a term is merely descriptive, and doubt is resolved in the applicant's favor. Korn Ferry's mark registered in October 2024.
Practical tip: When facing a disclaimer requirement, test the examining attorney's evidence: does it use your exact word, and does it show a recognized industry meaning or only loose, figurative uses? Point to your specimen, and don't rely on earlier registrations that issued without a disclaimer.
Decision 3: ZPILE - Descriptive of Metal Sheet Piles
Case: Precedential No. 4, In re Sheet Pile, LLC (March 19, 2024) Outcome: Refusal of ZPILE as merely descriptive of metal sheet piles affirmed
What Happened
Sheet Pile, LLC applied to register ZPILE for metal sheet piles, sheet pile sections and connectors. The examining attorney refused it as merely descriptive and as failing to function as a mark. Z-shaped sheet piles are a well-known type of sheet pile in the construction industry.
The TTAB's Analysis
The Board affirmed the descriptiveness refusal because:
- "Z" refers to sheet piling roughly in the shape of the letter Z, a type known to construction project designers and construction companies
- "PILE" is the generic word for the goods
- Together, ZPILE immediately tells those buyers that the goods are or relate to the well-known Z shape
- Sheet Pile said the examining attorney had split the mark into parts, but the combination as a whole was descriptive, and Sheet Pile addressed the examining attorney's evidence only in passing
The Board did not reach the failure-to-function refusal. It noted that a descriptiveness refusal leaves routes to registration (acquired distinctiveness or the Supplemental Register), while a failure-to-function refusal of a term as merely informational would be an absolute bar.
Why It Matters
Combining descriptive elements doesn't create a distinctive mark. If each component describes an aspect of the product, the combination is likely descriptive too. Running a letter and a word together without a space did not change the result.
Practical tip: When naming products, avoid combinations of industry-standard terms. If suppliers already use your proposed name, with or without a space or hyphen, for a type of product, expect a descriptiveness refusal.
Decision 4: Multi-Color Breakfast Cereal Mark - No Acquired Distinctiveness
Case: Precedential No. 2, In re Post Foods, LLC (January 4, 2024) Outcome: Refusal affirmed for multi-color breakfast cereal mark
What Happened
Post Foods sought to register seven colors (yellow, green, light blue, purple, orange, red and pink) on the entire surface of crisp cereal pieces, the colors of its Fruity Pebbles, for "breakfast cereals," claiming acquired distinctiveness under Section 2(f). It first claimed the cereal's shape too, then dropped the shape but left the goods broad. The examining attorney refused registration because the colors fail to function as a trademark: they are not inherently distinctive and had not been shown to have acquired distinctiveness.
The TTAB's Analysis
The Board affirmed the refusal. Key issues:
- Colors are never inherently distinctive on products, and proving acquired distinctiveness for a color is a substantial burden. Functionality was not at issue: there was no allegation or evidence of it
- Competitors commonly use similar color combinations: the record showed 15 other multicolored cereals, including Froot Loops and Trix, so Post's use was not substantially exclusive
- Post's long use, sales, advertising, media coverage and two surveys concerned its colors together with its crisp rice shape, but the mark as amended covered the colors on any breakfast cereal
- The second survey used multicolored ring-shaped cereal as a control, though the mark covered ring shapes too, and 89.3% of respondents identified the ring cereal as one of the third-party cereals
Why It Matters
Acquired distinctiveness requires more than just long use. Here even surveys failed, because the evidence did not prove what the application claimed. Every factor the Board weighs (surveys, length and exclusivity of use, advertising, sales, intentional copying and unsolicited media coverage) is measured against the mark as drawn and described and the goods as identified.
Practical tip: If you narrow your mark during examination, as Post did when it dropped the cereal shape, narrow your identification of goods to match, and design any survey to test the mark as claimed.
How to Navigate Descriptiveness Issues
During Clearance
When evaluating whether your proposed mark might face descriptiveness issues:
- Define your goods/services precisely - Descriptiveness is evaluated in relation to specific offerings
- Research industry terminology - Is your term commonly used to describe this type of product?
- Consider consumer perception - Would potential customers immediately understand the term as describing your product?
- Test the "imagination test" - Does understanding the mark's connection to your product require a mental leap?
- Check your logo and app icon too - A picture of the product can be just as descriptive as a word
During Prosecution
If you receive a descriptiveness refusal:
- Argue suggestiveness - Present evidence that the term requires imagination to connect to your goods
- Show incongruity - Demonstrate that the term isn't the natural way to describe your offerings
- Distinguish competitor usage - Show that others in your industry don't use this term descriptively
- Consider claiming acquired distinctiveness - If you have extensive use, gather secondary meaning evidence that matches the mark and goods you claim
Up Next: Part 4 - Use It or Lose It
In Part 4, we'll examine three rulings on use requirements: the GABBY'S TABLE specimen that failed to show use for online store services, the SMARTLOCK expungement appeals, and the ruling that offering your own goods at retail qualifies as a service.
Read Part 4: Use It or Lose It →
Search for Descriptiveness Conflicts with GleanMark
Wondering if your proposed mark faces descriptiveness issues? GleanMark's search tools help you find existing registrations and identify potential conflicts.
This article is for informational purposes only and does not constitute legal advice. Consult with a qualified trademark attorney for guidance on your specific situation.
Sources:
- Precedential No. 30 (block puzzle icon), opinion of December 30, 2024
- Precedential No. 13 (KORN FERRY ARCHITECT), opinion of June 27, 2024
- Precedential No. 4 (ZPILE), opinion of March 19, 2024
- Precedential No. 2 (multi-color breakfast cereal), opinion of January 4, 2024
- TTAB Reading Room
- The TTABlog's 2024 Precedential Decisions Summary
- Trademark Manual of Examining Procedure (May 2026 edition)
FAQ
What evidence supports acquired distinctiveness?
Sales, length of use, ad spend, declarations, and look-for advertising tailored to the goods.
How do TTAB decisions treat double entendre claims?
The Board scrutinizes consumer perception; clear double meanings help, thin records fail.
When should I amend to the Supplemental Register?
When inherent distinctiveness is unlikely and you want interim protection while building secondary meaning.
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