September 2022 Newsletter

Vol 15, Issue 3

Trademark Distinctiveness and the Supplemental Register

Trademarks and service marks (collectively, trademarks or “marks”) are forms of intellectual property that protect words, phrases, logos, or other indicia used to identify a particular source of goods or services. In general, a trademark allows its owner to exclude others from using a confusingly similar mark within the same or related segments of the market. This protects consumers and also prevents unfair competition from one provider benefiting off the reputation of another.

A trademark may be registered or unregistered (with unregistered rights automatically arising by use alone). Trademarks may be federally registered through the U.S. Patent and Trademark Office (USPTO), or less commonly, registered at the state level. The following refers to federal registration, which includes two separate registers: the Principal Register and the Supplemental Register. Registration on the Principal Register provides the full suite of rights available under trademark law, as discussed further below.

To be registered on the Principal Register, a mark must already be in use in U.S. commerce for selling the goods or services. In addition, this protection is available only for marks that are distinctive—in other words, marks that can be used to distinguish one source of goods or services over another.

Some marks are more distinctive than others. The table below depicts different categories of marks along a distinctiveness spectrum. At one end of the distinctiveness spectrum are marks that are considered inherently distinctive as identifying a source of goods or services. These marks often did not exist before being adopted as the owner’s mark (“fanciful” marks) or have nothing to do with the goods or services being sold (“arbitrary” marks).

Another category of inherently distinctive marks is “suggestive” marks. Suggestive marks hint at the nature of the goods or services being sold, but do not directly describe them. Instead, suggestive marks require some imagination, thought, or perception by the consuming public to discern which goods or services are being offered for sale.

At the opposite end of the distinctiveness spectrum are “generic” terms. Generic terms are the common names for goods or services, such as aspirin or escalator. In other words, the goods or services may be difficult to reference without use of the generic terms (these generic terms essentially being used as nouns). Since these same common names refer to the goods or services of all providers, generic terms cannot be distinctive and thus cannot be protected as trademarks.

In the middle of the distinctiveness spectrum are “descriptive marks”. Like generic terms, marks that merely describe the goods or services being sold are also not distinctive because the public cannot separate the source from what is being sold. Similarly, marks based on the owner’s name are often not distinguishable as indicating a source of goods or services rather than that person individually. However, these marks may acquire distinctiveness if they attain secondary meaning over time as the consuming public comes to associate the mark as a particular source rather than describing the goods or services themselves.

For example, “Good Cake Co.” would not be protectable for a bakery selling cakes unless the consuming public recognized it as a particular brand of cakes. In contrast, the name cake alone could not be protectable for cakes because it is the generic term.

While merely descriptive marks cannot be registered on the Principal Register, they can be registered on the Supplemental Register. The Supplemental Register is effectively a placeholder for marks that have not yet acquired distinctiveness. Registration on the Supplemental Register affords many of the same rights provided by the Principal Register, including that:

• the owner may use the ® designation with the mark rather than the ™ designation used by unregistered marks,
• the registration prevents new sources (competitors) from subsequently registering a confusingly similar mark with the USPTO, including on the Principal Register, and
• the registration on the Supplemental Register may be used as a basis for pursuing trademark protection in other countries.

Registration on the Supplemental Register provides significant rights for the trademark owner. However, there are notable additional benefits to registration on the Principal Register, including the right to bring lawsuits in federal courts, the registration serving as constructive notice of the registrant’s ownership of the mark, and the ability to have the U.S. Customs and Border Protection service and the U.S. Postal Service seize goods that infringe the rights of the registered mark (e.g., counterfeits).

For this reason, it may be advantageous to adopt a two-step approach for protecting descriptive marks. When an application for the Principal Register is rejected as being merely descriptive, the mark may instead be registered on the Supplemental Register. This affords significant intermediate protection until the mark has acquired distinctiveness and is eligible for the Principal Register. There is also a legal presumption that a mark acquires distinctiveness after five years of continuous use. Therefore, one strategy is to file a new application for the Principal Register five years after registering on the Supplemental Register.

Please contact your Andrus attorney for additional information or any questions on trademarks protection strategies.