Trademark Jurisprudence is abundantly clear on one essential point: Trademarks MUST be sufficiently distinct vis-à-vis the goods/services listed in the USPTO trademark application to be eligible for registration. In the event that a trademark is deemed to be ‘Merely Descriptive’ by a trademark examiner, it will not (barring certain exceptions) be admitted to the Principle Register. Instead, the applicant may seek registration on the Supplemental Register (Lanham Act Sections 23-28, 15 U.S.C. §§ 1091-1096), the second-tier Register designed to house marks that are descriptive of the goods/services listed in the trademark application. Upon achieving sufficient “distinctiveness” (as determined in large part by marketplace-recognition), the trademark may then be switched over to Principal Register.
TRADEMARK SUPPLEMENTAL REGISTER: THE FUNDAMENTALS
The reason why most trademark applicants and even IP trademarks are not familiar with the Supplemental Register is because it is usually only encountered as a viable option after the USPTO trademark examiner has issued a preliminary rejection of the mark by way of an Office Action alleging Merely Descriptive issues. For example, an Ice Cream company that calls itself “Smooth” will likely trigger a Merely Descriptive rejection (Section 2(e)) because the word “Smooth” describes the material quality of the Ice Cream.
However, not all Descriptive trademarks are necessarily eligible for registration on the Supplemental Register and the examining attorney will likely only offer registration on the Supplemental Register as an option if he/she determines that the mark will ultimately be able to transcend the Merely Descriptive issue upon obtaining a sufficient degree of distinctiveness. Contrast this eligibility requirement with the Principal Register, which mandates, that trademarks MUST be distinct, vis-à-vis, the goods/services listed in the trademark application (either by stint of being inherently distinct or through achieving secondary meaning) in order to achieve registration.
Another essential point to understand about the Supplemental Register is that it is only a viable option for those marks which satisfy the In Use requirement; if a trademark applicant applied under a 1(b), Intent To Use model, the otherwise merely descriptive trademark cannot by law be placed on the Supplemental Until the applicant has filed an acceptable allegation of use.
ESSENTIAL BENEFITS OF PLACING A TRADEMARK ON THE SUPPLEMENTAL REGISTER
While it is undoubtedly true that it would be preferable for an applicant to have his/her trademark application accepted and registered on the Principal Register, there are nevertheless certain benefits to having the mark listed on the Supplemental Register. Perhaps the most recognized and important of these benefits is that the trademark owner is permitted to use the ® symbol adjacent to the mark. This is enormously valuable because it instructs and informs potential competitors who are conducting clearance searches that your mark has obtained “Registration” (and without specifying registration on the Supplemental Register). Next, in certain instances, Trademark Registration on the Supplemental Register is sufficient to obtain a priority filing date in foreign countries. Additionally, the Trademark owner obtains protections against confusingly similar trademarks under the Likelihood of Confusion Doctrine (Trademark Act Section 2(d)) and as a corollary, the owner of the register trademark has the right to bring suit for infringement in a Federal Court. Lastly, registration on the Supplemental Register enables the trademark holder to protect the mark while it is in the process of obtaining secondary meaning.
WEAKNESSES OF THE TRADEMARK SUPPLEMENTAL REGISTER
To fully appreciate the weaknesses associated with having one’s trademark on the supplemental register, it may be most instructive to consider all of the benefits exclusive to having a registered trademark on Principal Register including:
- A Presumed evidence of the validity and legitimacy of the trademark registration along with the trademark registrant’s ownership and exclusive right to use the mark in commerce
- Constructive notice to the public of the registrant’s claim of ownership
- Statutory remedies
- An established date of constructive use, demarcated by the date of the application’s first filing
- The trademark owners right to marshal forth a suit against an infringer of the mark in federal court (irrespective of diversity jurisdiction)
- The right to file the trademark registration with the United States Customs Service which effectively serves to stymie the importation of foreign goods which infringe upon the trademark holder’s rights
As a consequence of the trademark being by definition, Descriptive, it is much more challenging for the owner of the trademark to prove infringement because the trademark’s mere presence on the Supplemental Register is “proof” that the mark is weak! A competitor can and will make the claim that trademark infringement hasn’t occurred because the mark is not sufficiently strong for the sort of distinctiveness required to prosecute an infringement suit.
Clearly, having one’s trademark registered on the Principal Register rather than on the Supplemental Register has its advantages. The next step in moving the trademark from the Supplemental Register to the Principal Register is by ensuring that it has obtained Secondary Meaning.
HOW A TRADEMARK CAN OBTAIN “SECONDARY MEANING”
Remember, if the prospective trademark is not inherently distinctive, it can only achieve registration on the Principal Register if the trademark applicant can summon evidence that the mark has obtained an acquired distinctiveness, or secondary meaning. 15 U.S.C. §1052(f).
So, what is “secondary meaning”? Well, in its simplest formulation, secondary meaning is evidence that the trademark, despite its relatively “descriptive” nature has managed to become distinct vis-à-vis the goods/services listed in the “mind” of the consuming public. Here, the trademark has obtained some sort of special significance that distinguishes the otherwise descriptive trademark so that consumers understand from where the product has been produced and/or manufactured. In order to demonstrate that the mark has obtained secondary meaning, the trademark applicant must show that the primary significance of the term, from the perspective of the consuming public, is the producer of the goods/services. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972) .
Three Types of Evidence to Demonstrate Acquired Distinctiveness
- Prior Registrations: One powerful piece of evidence for the succesfull establishment of acquired distinctiveness is the legitimate claim of ownership of an existing (or multiple) active-prior Trademark registrations on the Principal Register for the same trademark with sufficiently similar goods/services.
- Five Years’ Use: Another way trademark owners may establish evidence of acquired distinctiveness is to provide a verified statement that the mark has in fact become “distinct”, vis-à-vis the goods/services, by virtue of the fact that the applicant has “substantially”, “exclusively”, and “continuously” for a period of 5 years prior to the date upon which the claim of distinctiveness was made by the applicant. (37 C.F.R. §2.41(a)(2); see TMEP §§1212.05–1212.05(d))
- Other Evidence: Here, it is of course not entirely obvious what “other evidence”, for the purposes of trademark jurisprudence necessarily covers, but the idea is that the trademark applicant must demonstrate a meaningful and concerted effort to establish the nexus between the consuming public, the trademark, and the manufacturer/producer of the trademark. For example, evidence of $1,000,000 spent in marketing and advertising on the goods/services covered by the trademark would certainly count as some sort of “evidence” of the establishment of secondary meaning.
MOVING YOUR TRADEMARK FROM THE SUPPLEMENTAL REGISTER TO THE PRINCIPAL REGISTER
Please do not be misled by the language of “moving”. The reality is that one cannot simply move the registration of a trademark from the Supplemental Register to the Principal Register, but rather, the trademark holder must file a new trademark application entirely. Within the new application, the trademark attorney representing the applicant may indicate that the owner already posses the same mark but on the Supplemental Register. Unfortunately, the trademark-examining attorney at the USPTO will likely request quite a bit of info in order to demonstrate that secondary meaning has been achieved. Specifically, evidence of ubiquitous use of the trademark, marketing and advertising of the trademark, and even third-party submissions, which attest to the salience of the trademark. Ultimately, while the Supplemental Register is not as powerful or robust in its protections, it still serves the immensely important role of providing certain trademark rights and it therefore behooves trademark applicants to file potentially Descriptive trademarks, with the understanding that they may be rejected from the Principal Register but Admitted to the Supplemental Register.
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