Suggestive Mark v. Descriptive Mark

Distinctiveness is a prerequisite for registration of a trademark. Generally speaking, in descending order of strength of distinctiveness, trademarks can be classified into three categories: (1) fanciful or arbitrary marks, (2) suggestive marks, and (3) descriptive marks. 

By suggesting or hinting at the nature or an attribute of the designated goods and services without directly describing it, suggestive marks are still inherently distinctive and thus eligible for trademark registration without showing of a secondary meaning. Although they are not as strong as fanciful or arbitrary marks in terms of distinctiveness, suggestive marks are sometimes of greater value to branding, as they are easier to remember, anchoring the goods and services they suggest more firmly in the consumer’s mind.  On the other hand, descriptive marks are not registrable without showing of a secondary meaning, since they explicitly describe the quality of goods or services.

While the distinguishing line between suggestive marks and descriptive marks is theoretically clear, to draw the line in a real case often turns out to be challenging; a mark that an applicant deems suggestive may appear descriptive to the examiner.  So what are the criteria examiners consider in real cases?  In a recent decision, the Taiwan Intellectual Property and Commercial Court (the IPC Court) revisited this issue.  Amazon Technologies, Inc. v. TIPO, 109 Xing-Shang-Su 106, IPCC (March 2022).

In this case, Amazon Technologies filed a trademark application for the mark “TRUEMESH” in respect of “WIFI mesh network goods/services”, among others, in Classes 9, 35, 38, 42 and 45 of the Nice Classification.  The IP Office refused registration of the mark on the ground that the mark was descriptive of the designated goods/services. After the Board of Appeals upheld the IP Office’s decision, the case was appealed to the IPC Court.

In this administrative litigation, Amazon Technologies argued that “TRUEMESH” was an invented word, namely a creative combination of two dictionary words “TRUE” and “MESH,” hence not directly descriptive of the function or characteristic of the designated goods or services. However, this argument was not found convincing by the IPC Court, which held that the mark “TRUMESH” was descriptive rather than suggestive.  The judges’ main rationales are as follow:

a. Despite “TRUEMESH” is not an ordinary word, it simply combines two dictionary words “TRUE” and “MESH”, which were chosen for the purpose of explicitly describing the characteristics of goods or services on which the mark is to be used.  In other words, without exercising any imagination or similar cognitive activities, the relevant consumers will deem that the mark simply describes the quality of the designate goods or services, directly conveying such ideas that “this is a true mesh network” and “this is a true mesh Wi-Fi.”  Therefore, “TRUEMESH” is a descriptive mark which cannot be registered due to lack of inherent distinctiveness.

b. Further, there is no sufficient evidence demonstrating that “TRUMESH” has acquired a secondary meaning through use to establish acquired distinctiveness. The use evidence submitted showed that the plaintiff’s house mark “eero” always appeared with “TRUEMESH” in actual use, evidencing the latter was used merely in a descriptive sense.  In this context, the relevant consumers will consider the house mark “eero” rather than “TRUEMESH” to be the source identifier of the goods or services in questions. 


As the “TRUMESH” case shows, a mark formed by an “invented” word (e.g. being a combination of two or more dictionary words) is still likely to be considered descriptive and absent of inherent distinctiveness, if relevant consumers can easily understand the connection between the mark and the goods or services without exercising imagination or similar cognitive activities.

In contrast, if a mark being a creative combination of dictionary words does require imagination or similar cognitive activities of relevant consumers to comprehend the denoted feature or characteristic of the goods or services, it can qualify a suggestive mark. Take a case our team recently handled for example, the mark “WEBFLEET”, a creative combination of two common words “WEB” and “FLEET”, is deemed suggestive of “vehicle tracking and fleet management software in the cloud.” This mark has been allowed for registration without showing of a secondary meaning.

Another test courts oftentimes employ is whether it would be unfair to the applicant’s competitors if the mark is allowed for registration without showing of a secondary meaning.  Wu v. TIPO, 102 Pan 526, Supreme Administrative Court (Aug. 2013). If the answer is “yes,” then the mark is descriptive; if not, the mark is suggestive. The rationale behind this test is: suggestive marks are not what players in the relevant industry would commonly or necessarily choose when they wish to describe the features or attributes of their goods or services, so grant of exclusive right to suggestive marks without showing of a secondary meaning will not hinder competition.

Overcoming descriptive rejections from the IP Office is difficult, although not impossible. Our team has many experiences in helping clients get suggestive marks registered over descriptive rejections. As each case is fact-specific, please contact us for more information if you need our advice on your suggestive marks or how to form a meaningful branding strategy in Taiwan.