Start here
The Zest

Zen, Glow, Vital, Holistic: why common wellness words make weak trademarks

Written by

Words like Zen, Glow, Vital and Holistic make weak trademarks for one of three reasons: they describe what you sell, they praise it, or so many wellness brands already use them that each owner's rights only reach a short distance. Some of these names get refused outright. Others register but won't stop much, because a word everyone uses can't belong to just one brand.

That's the short answer. The longer one depends on which of the three problems your word has, and some words have more than one.

Where the USPTO starts

The TMEP, the manual USPTO examining attorneys follow, sorts marks along a continuum. At one end are fanciful and arbitrary marks: invented words, or real words with no connection to the product. Next come suggestive marks. Then merely descriptive terms. At the far end are generic terms, the name of the thing itself.

Fanciful, arbitrary and suggestive marks are called "inherently distinctive," and they can register on the Principal Register without extra proof. Merely descriptive terms can't, unless the owner shows acquired distinctiveness. Generic terms can't register on any register "under any circumstances."

Most wellness words sit in the middle of that line, which is exactly where the fights happen.

Problem one: the word describes

Under § 2(e)(1) of the Lanham Act, the USPTO refuses a name that is "merely descriptive" of the goods or services. The TMEP says a term is merely descriptive if it describes "an ingredient, quality, characteristic, function, feature, purpose, or use" of what you sell, or if it "immediately conveys" that information.

The test is always applied to specific goods or services, never to the word in the abstract. That's why the same word can be fine in one place and refused in another. Ask what a shopper would understand the word to mean on your actual product. If a word tells them a quality of a serum, or a feature of a service, before they've had to think about it, the examiner will see it the same way.

A suggestive mark is different. The TMEP describes it as one that requires "imagination, thought, or perception" to connect to the goods. That mental step is what you want.

Problem two: the word praises

Wellness branding leans hard on aspiration. Pure, ultimate, elevated, best. The TMEP treats laudatory terms, the ones that attribute quality or excellence to goods or services, as merely descriptive. Its examples include:

  • THE ULTIMATE BIKE RACK, merely descriptive and subject to a disclaimer.
  • THE BEST BEER IN AMERICA, held so highly laudatory and descriptive for beer that it can't acquire distinctiveness at all.
  • SUPERJAWS, merely descriptive for tools that include jaws.

The TMEP also cites a rule for "super" names: a "super" term is generally merely descriptive when it's combined with a word that names the goods, or a principal component, grade or size of them. Otherwise it's suggestive. That's a useful way to think about any praise word paired with a product word.

Problem three: everyone already uses it

This is the problem that catches founders who get through the first two. A word can be registrable and still be weak.

The TMEP explains that a large number of active registrations for the same or a similar term on similar goods may show the term is "relatively weak," and that evidence of third-party use can show "commercial weakness." A mark that's relatively weak is entitled to "only a narrow scope of protection." The examples it collects are worth reading:

  • In Juice Generation, considerable third-party use of "peace and love" for restaurant and food goods was relevant to the mark's strength.
  • In FabFitFun, SMOKING HOT was found "somewhat weak" for cosmetics, based partly on third-party use.
  • In Primrose, at least 85 actual ROSE-formative uses and eight similar registrations supported a finding of weakness.

The catch is that a crowded field cuts both ways. It may make it easier for your name to coexist with the other Glow brands. It also means you can't stop the next one.

And crowding doesn't rescue a descriptive name. The TMEP says a descriptive term "does not become registrable simply because other seemingly similar marks appear on the register."

What happens when the word is part of a longer name

Most founders don't file the bare word. They file Glow plus something. When a composite mark contains a descriptive or generic part, the USPTO typically requires a disclaimer of that part. The TMEP describes a disclaimer as giving up exclusive rights in the disclaimed wording apart from the mark as shown.

So if your registration ends up with the common word disclaimed, your rights rest on the rest of the name. That's fine when the rest is strong. It's a problem when the rest is another soft word.

What this means for your brand

A few practical points for founders choosing or keeping one of these names:

  1. Let the distinctive word do the work. If a common wellness word is in the name, pair it with something that has no obvious connection to what you sell.
  2. Test the word against the product, not the dictionary. The question is what the word tells a shopper about your specific goods or services.
  3. Search before you fall in love. A clearance search shows you how crowded the word is in your lane, which tells you how far your rights could reach. I explain how that works in the article on searching before you file.
  4. Expect small differences to matter. In a crowded field, buyers learn to tell similar names apart by small details, which is why weak marks get narrow protection. I wrote about how much difference is enough in the article on how different a name has to be.

None of this means a common wellness word can never be part of a good brand. It means the word can't carry the brand alone. For the broader picture, see the article on strong and weak names.

If you're weighing a name with a common wellness word in it, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

Start here