A office action from the U.S. Patent & Trademark Office states that the trademark is not “distinctive” and therefore will not be allowed register on the Principal Register. However the mark may qualify for registration on the Supplemental Register. What does this mean?
Descriptive marks are not allowed on the Principal Register, however they may be allowed on the Supplemental Register. A descriptive mark means some part of the mark describes a characteristic of the goods or services. For example, INK TATOO CO. is registered on the Supplemental Register because it is descriptive of the tattoo services provided.
A descriptive mark cannot be registered on the Principal Register, but it may be registered on the Supplemental Register. Some key features of trademark registration on the Supplemental Register are:
- Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services.
- Inclusion of the mark in the USPTO’s database of registered and pending marks, which will:
- Provide public notice of the registration;
- Make it easier for third parties to find the registered mark; and
- Potentially deter third parties from using confusingly similar marks.
- Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
- Use of the registration as a basis to bring a lawsuit for trademark infringement in federal courts.
- Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
Below is a chart that compares some features of registration on the Principal Register and on the Supplemental Register.
|Principal Register||Supplemental Register|
|Trademark must be distinctive||Trademark may be descriptive, and cannot be distinctive|
|Entitled to use ®||Entitled to use ®|
Bar to subsequent registrations of confusingly similar marks
|Bar to subsequent registrations of confusingly similar marks|
|Registered mark is presumed valid||No presumption of validity of registered mark|
|Can file intent-to-use trademark application||Cannot file intent-to-use trademark application|
|May be declared incontestable after five years||Cannot be declared incontestable|
|Published for opposition||Not published for opposition|
|Subject to cancellation proceedings||Not subject to cancellation proceedings|
A key feature of trademark registration, on either Register, is that the mark is in the USPTO database. A registered mark can be a bar to subsequent registrations of confusingly similar marks. So, it’s better to have a mark on the Supplemental Register rather than to have no trademark registration at all.
And, in some situations it might be advantageous to have a mark register on the Supplemental Register without requiring publication for opposition — just ask anyone who has had an opposition filed after publication!
It’s Important to Protect A Descriptive Brand Name
It often happens that, when launching a business, the business chooses a descriptive brand — a descriptive trademark. It is important to apply for registration of the descriptive trademark to protect the brand name. The descriptive trademark may be entitled to registration on the Supplemental Register, and that will prevent competitors from obtaining a registered trademark of a confusingly similar name.
In addition, it’s possible for a descriptive mark on the Supplemental Register to “acquire distinctiveness” over time. If a descriptive mark acquires distinctiveness the mark may be entitled to registration on the Principal Register. A mark may acquire distinctiveness by five years of continuous use, in combination with advertising and marketing efforts. Thus, a mark that is descriptive and initially registered on the Supplemental Register may subsequently become registered on the Principal Register. For all these reasons, having a registration on the Supplemental Register provides many benefits to trademark owners.
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