Michael Hall talks about the trademark application that said too much:
[Imagine a]n examining attorney has just pulled a new application. Itâ€™s a safe bet that one of the very first things he or she will do is visit the applicantâ€™s website to see whether and how the applicant is using the applied-for mark. If the applicant itself is clearly using the applied-for mark descriptively, it makes it rather difficult for the applicant to maintain with a straight face that its mark is not merely descriptive. . . .
If a merely-descriptive refusal is a realistic possibility, it might be wise before filing to ensure that the clientâ€™s website does not use the applied-for mark in a descriptive manner.
See his post for his discussion of the case describing, if you will, the drawbacks of the “unwise” approach.
Question: If the mark really has descriptive properties but we’re prepared to stand and fight for it, and we’re not merely counseling clients and counsel to “hide the ball,” is there truly any way to avoid this problem?