Trademarks do not all receive the same level of protection. It is not a binary system where something either receives trademark protection or not. Instead, the scope of protection a trademark receives is based on its distinctiveness. There is a spectrum of trademark distinctiveness where each trademark falls. A more distinctive trademark is stronger and afforded a greater level of protection. In short, the strongest trademarks are made up of words that are not directly related to the products/services for which they are sold.
The U.S. Patent & Trademark Office (USPTO) will only register trademarks that meet a certain threshold for distinctiveness. However, there are two “registers” (think of these as lists of trademarks) at the USPTO. Stronger and more distinctive trademarks can sometimes be registered on the Principal Register. On the other hand, weaker trademarks are still sometimes eligible for registration, but on the Supplemental Register. Each register gives the owner of the registration different rights. The Principal Register is highly preferable to the Supplemental Register.
The Principal Register
For trademark applicants, the goal is generally to register your mark on the Principal Register. Successful registration on the Principal Register entitles you to all of the benefits, protections, and legal presumptions associated with a federal trademark registration. You receive the legal presumption of ownership of the mark across the United States. Your registration will also prevent other confusingly similar marks from registering with the Trademark Office. With a registration on the Principal Register, you are in the “driver’s seat” in terms of securing and controlling your brand.
The Supplemental Register
While everyone wants a registration on the Principal Register (and for obvious reasons), there are some trademarks not eligible for registration on the Principal Register. These trademarks are less distinctive, and can only be registered on the Supplemental Register, including “merely descriptive” trademarks. Descriptive trademarks generally consist of wording that describes the products and/or services for which they are used. For example, U.S. BANK is a descriptive trademark because it combines the generic word BANK with a geographic descriptor (i.e. it is a bank located in the United States). When a trademark is registered on the Supplemental Register, the registration provides only very limited protections.
Trademarks used in an ornamental fashion can also be eligible for registration on the Supplemental Register. This is most common with registrations for clothing, where the trademark appears only on the front of a shirt or hat, and not on a tag, label, sticker, or other place where the clothing brand name is typically found.
Unlike registration on the Principal Register, registration on the Supplemental Register does not mean that the registrant has exclusive rights to the trademark. There are some benefits, though. Registrations on the Supplemental Register can prevent others from registering confusingly similar marks with the USPTO. For descriptive trademarks, this is especially useful because many descriptive marks can eventually be registered on the Principal Register after five years of use. The Supplemental Register be used kind of like a placeholder for this purpose. Once the trademark has been used for five years, you can file a new application attempting to get the mark on the Principal Register. The legal presumption is that a claim of acquired distinctiveness based on five years of use is acceptable. Only highly descriptive trademarks or generic terms will still be refused registration on the Principal Register.
Generic Terms
“Trademarks” that are not at all distinctive are called generic terms. Calling them “generic trademarks” is actually a misnomer, as generic terms cannot function as trademarks at all. These terms can never be registered, whether on the Principal or Supplemental Register. Instead, they are the words used to indicate a product or service itself, and cannot set aside a particular brand associated with that product or service.
As you can tell, it is very important where we draw the lines in terms of trademark distinctiveness. The difference between distinctive and descriptive marks can determine whether you can register your trademark on the Principal Register (and receive broad protections) or only on the Supplemental Register. Moreover, the difference between descriptive trademarks and generic terms can determine whether your trademark can be registered on the Supplemental Register (with a path to acquiring distinctiveness over time), or prevent you from being able to protect and register your trademark altogether.
These distinctions are often very subjective. As a result, it may be difficult to predict where the trademark examining attorney assigned to your application will place your trademark on the spectrum of distinctiveness. Two examining attorneys may differ in their opinions. However, an experienced trademark attorney can help you make a more informed decision. A trademark attorney can research other applications and registrations to try and determine what decisions have been made by the Trademark Office in the past regarding a particular term. This will help them give you a good idea about whether your mark is eligible for registration.
Can You Register Your Mark On the Principal Register?
Before you file your trademark application you should speak with an attorney to determine whether registration is even possible. Otherwise, you may be wasting hundreds of dollars in non-refundable application filing fees. If you would like to find out whether your mark is distinctive enough for registration, please call me today at (480) 360-3499 or send me an email at kevin@yourtrademarkattorney.com to schedule your free initial consultation today. I look forward to speaking with you!
