What is a trademark, and which one should you choose for your business?
Trademarks serve the purpose of protecting a mark in the public sphere, notably in commerce, in order to prevent consumer confusion and further protect businesses from competitors.
Rejected for being descriptive? The Trademark Supplemental Register might be an avenue of protection
However, many businesses will attempt to obtain marks deemed by the trademark office (USPTO) as “descriptive.” For example, a client attempting to obtain a mark for “lightbulb” or “ridesharing” will face issues, as these marks merely describe the products/services offered. Nonetheless, assuming the mark is not generic, the trademark office provides an avenue of protection for these descriptive marks: the supplemental registry.
Advantages of being on the Trademark Principal Register
As you might imagine, having your mark on the principal register allows for more protection under the law than the supplemental register. The principal registry provides face value, or prima facie, evidence in a federal or state court that you retain a federally registered mark. The burden is now on your competitors to prove that the federal government was wrong to issue you federal ownership – this is neither an inexpensive nor expeditious endeavor. On the other hand, the supplemental registry does not include the presumption of federal ownership. Therefore, the burden is on youto establish the fact that consumers recognize your marks, products, services, or a combination of the three. This process is known as establishing “acquired distinctiveness.” After remaining on the secondary registry and showing continuous use of the mark for five years, in addition to presenting additional proof of acquired distinctiveness, the mark can then be considered for the principal registry.
Protections provided by the trademark Supplemental Register
What kind of protections does the supplemental registry provide? As mentioned above, it is often the first step in establishing acquired distinctiveness to eventually move the mark to the principal registry. Moreover, the supplemental registry is still federal registration, so you can still use the notice of federal registration (®) on your mark.Furthermore, your mark will be present on clearance searches and will dissuade others from applying for confusingly similar marks. It is important to note that the protections afforded by the supplemental registry do not quite meet the level of protection provided by the principal registry, but if your mark is inherently distinctive, this might be your only avenue.
Trademark disclaimers
Although the trademark office will not allow an inherently descriptive or generic mark on the principal registry, descriptive or generic components of marks can be disclaimed to allow for placement on the principal registry. For example, if I wanted to obtain the mark for “Karima’s Law Firm,” I would need to disclaim the words “law” and “firm.” The statement implies that the disclaimed words may be willingly used by other businesses when marketing similar goods and services. Although disclaiming part(s) of mark may translate to less protection in court, placement on the primary registry with a disclaimer is often preferable to the supplemental registry.
Curious which type of Trademark Registration will work best for you?
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Innovent Law helps innovators protect, maintain and defend patent, trademark, copyright, and other intellectual property rights in the United States and around the world.
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This article was written by Daniel Ginsberg. Daniel is currently a senior at the University of California, Berkeley, Haas Business School. He hopes to eventually go to law school following his undergraduate education. He is primarily interested in intellectual property law and valuation.
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