Trademarks are registered under one of two national registers at the United States Patent and Trademark Office (USPTO): Principal Register and Supplemental Register. Applicants will generally file for the Principal Register because it offers the most protection for the mark. In some cases, the Trademark Examiner determines that the trademark, by itself, is not sufficient to distinguish the goods or services. In these situations, the Applicant may acquiesce to registration on the Supplemental Register in an office action response to overcome the rejection. For marks denied registration on the Principal Register, registration on the Supplemental Register can still provide meaningful trademark protection, including:
- the right to use the ® symbol in connection with the mark, which may deter potential infringers;
- increased odds of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
- the right to sue for infringement in federal courts; and
- the ability to petition for registration on the Principal Register if the mark has become distinctive through extensive use, or if the mark has been used continuously for five years (“acquired distinctiveness”).
For the many marks that don’t meet the requirements for registration on the Principal Register, registration on the Supplemental Register provides more protection for the owner than mere use provides, and can pave the way for the mark to later be moved to the Principal Register (via acquired distinctiveness). Trademarks help the public to identify the goods and services that it wants to buy or use. The public as potential customers has the right to not be confused and to obtain the level of quality that it associates with the trademark. Put simply, trademark law aims to achieve the goal of no confused customers.
A Supplemental Register trademark will only function as a trademark if the public can use that trademark to distinguish your goods/services from that of your competitors. It is the job of the trademark owner to make that happen through extensive promotion of the brand for the goods or services. This requires a commitment of time, energy and money so that the purchasing public subconsciously associates the trademark with the goods or services. There is no magic formula for this, but, there are some typical ways that it can happen:
- Allowing a long period of time to go by (usually five years) and the use of the mark is substantially exclusive (that is, no competitor uses the mark).
- Spending significant amounts of time, energy or money on advertising and promotion of the trademark so that the public uses the mark to identify the owner as the source of the goods or services (and not a description of them).
- Monitoring the usage of the trademark and helping educate the public and the press that it is a trademark (and not a description).
- Soliciting verified statements from customers recognizing the trademark.
- Conducting surveys, market research and consumer reactions studies.
- Preventing competitors from using the trademark through demand letters and appropriate legal action.
In taking these actions, the trademark owner is acquiring distinctiveness, that is, building up the secondary meaning of the Supplemental Register trademark as a source identifier, rather than a description of the goods or services. This will develop evidence that can be presented to the United States Patent and Trademark Office (USPTO) to prove that the trademark is distinctive. If the USPTO approves, it will move the mark to the Primary Register. Just how much needs to be done, how difficult it will be, and how long it will take will depend on the specifics of the individual case. For small businesses, some creativity can go a long wa, because there is no “perfect” kind of evidence; that is, if using creative ways to associate the trademark with the goods/services in the mind’s eye of the public, the USPTO will consider it. Think: guerrilla marketing, quasi-judicial legal action not in the courts, social media, internet analytic information — these are all powerful, non-traditional sources of evidence that help show what the public is thinking.
If it is undesirable to spend the necessary time, energy or money enforcing the Supplemental Register trademark in order to acquire distinctiveness, then efforts should be made to move to a new trademark that is “inherently distinctive” and get it registered on the Primary Register.