One of the main hurdles to trademark registration is distinguishing your proposed mark from the already existing trademarks currently in use in commerce. Before a mark becomes registered, it must be distinct enough in order for a consumer to distinguish the goods and or services associated with the proposed mark from registered marks. This is known as the distinctiveness analysis and it is the examining attorney’s job at the United States Patent and Trademark Office (USPTO) to probe your proposed mark to ensure that it is distinct enough so as not to cause any likelihood of confusion between your proposed mark from the already existing registered marks in use.
The Distinctive Continuum
There are five categories that run on a continuum starting at the non-distinctive category, ‘Generic’ all the way to the most distinct category, ‘Fanciful.’
Below is a chart displaying all five trademark distinction categories:
(1) Fanciful:A fanciful mark is an original word with no reference or logical nexus to the nature of the goods and or services.
(2) Arbitrary: An arbitrary mark has no meaning as applied to the goods and or services. For example, “Apple” computers.
(3) Suggestive: A suggestive mark requires some imagination or leap in logic to reach a conclusion about the nature of the goods and or services.
(4) Descriptive: A descriptive mark is descriptive of some aspect of the goods and or services. For example, a descriptive mark is not distinctive and therefore not eligible for trademark registration without secondary meaning or acquired distinctiveness.
(5) Generic.A generic mark refers to the goods and or services itself rather than an indication of source. A generic mark may not be registered and does not receive trademark protection. For example, “Chocolate” as applied to a brand for chocolate bars.
When proposed marks fall within the distinctive categories, either in the Suggestive, Arbitrary, or Fanciful categories, then it has already overcome its first hurdle by being distinct enough to apply for registration. However, have no fear! When a proposed mark ends up falling on the lower end of the distinction continuum, there is still hope for registration; the supplemental register.
The Supplemental Register
The USPTO maintains two different trademark registers that identify registered trademarks in the United States. The lists are referred to as the supplemental register and the principal register. The principal register is the preferred list to be registered on for a proposed mark because of the significant benefits to the trademark owner. The supplemental register has some benefits as well but they are not as significant as the principal register. A potential trademark applicant should never automatically apply for trademark registration on the supplemental register, instead registration should always be sought initially on the principal register. However, when the proposed mark fails to overcome the distinction requirement, the examining attorney may suggest registration on the supplemental register.
During the examination period of a proposed trademark, the USPTO examining attorney may refuse the proposed mark on the principal register if he or she deems the mark to be “merely descriptive” of the goods and or services of the applicant. This is because the supplemental register is the register that is reserved for descriptive marks, which are not inherently distinct enough to be recognized as a trademark.
As mentioned, registering one’s proposed trademark on the supplemental register does afford the applicant with some benefits even if they are not all of the benefits obtained through the principal register.
Pros of Registering on the Supplemental Register
The supplemental register does provide some benefits to the trademark owner. Here is a list of the main benefits afforded to a trademark applicant registering on the supplemental register.
- Prevents registration of another mark on the principal and supplemental registers if a likelihood of confusion exists with the mark registered on the supplemental register;
- Option to refile a trademark application and request registration on the principal register later usually after five years of substantial and exclusive use the mark in commerce to show acquired distinctiveness
- Allows the trademark owner to use the circle R ®; and
- Option to file a suit for infringement in federal court instead of state court.
A significant benefit is number 2 above because it allows for non-distinct marks to gain distinction over time and then ultimately reapply for registration on the principal register. It takes five years of substantially exclusive and continuous use before the trademark applicant may refile another trademark application and request registration on the principal register.
We’re Here to Help!
Before applying for any trademarks, it is always best to seek the guidance of an attorney experienced in trademark law. DuFord Law can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your needs.