In an earlier post, I introduced the concept of trademark distinctiveness. Distinctiveness for trademarks is a spectrum. The more distinctive a mark, the stronger that trademark is. These stronger trademarks have unique names. That is what makes them distinctive. The names are unrelated to the products/services they are sold with. Good examples include Kodak for cameras, or Buick for cars. The Trademark Office will only register trademarks that meet a certain threshold for distinctiveness. Distinctiveness determines whether a trademark can register on the Principal Register or the Supplemental Register. Of course, each register gives the registration owner different rights. The Principal Register is where you want to be.
The Principal Register
For trademark applicants, the ideal situation is that the Trademark Office allows registration of your mark on the Principal Register. This type of registration allows you all of the broad protections of a federal trademark registration. You have the presumption of ownership of the mark, and nation-wide rights to it. Your registration will also prevent other confusingly similar marks from registering with the Trademark Office. This is the best-case scenario. This is what all business owners should seek to ensure that they are protected from a trademark perspective.
The Supplemental Register
There are some marks that cannot be registered on the Principal Register. Some marks at the lower end of the spectrum of distinctiveness can receive limited protection on the Supplemental Register. These are “merely descriptive” marks. In other words, the mark describes the products/services with which it is used. For example, CLEAN used for bar soap is considered descriptive.
You can register merely descriptive marks on the Supplement Register. However, registration on the Supplemental Register does not mean that the registrant has exclusive rights in the mark. There are some benefits, though. Marks registered on the Supplemental Register prevent the registration of confusingly similar marks with the Trademark Office. This is important, because most descriptive marks can eventually go on the Principal Register after five years of use. The Supplemental Register is sort of like a placeholder for this reason. With five years of use, you can file a new application attempting to get the mark on the Principal Register.
There is a third possibility, as well. Marks that are not at all distinctive are called generic. You cannot register these marks at all. Trademark law does not protect generic marks. As you can tell, these distinctions are very important. The difference between distinctive and descriptive marks can determine whether you can register your trademark on the Principal Register, and have ownership of that mark. And the difference between descriptive and generic marks can either put you on the Supplemental Register (with a path to acquiring distinctiveness over time), or prevent you from obtaining any kind of registration.
These distinctions are often very subjective. As a result, it may be difficult to predict what the trademark examining attorney that gets your application will decide. It is common for these attorneys to 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. 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?
Do not file an application for a potentially generic mark on your own. Speak with an attorney before potentially wasting hundreds of dollars in application filing fees. If you would like to find out whether your mark is distinctive enough for registration, please call me today at (314) 479-3668 or send me an email at email@example.com to schedule your free initial consultation today. I look forward to speaking with you!