Morris Manning & Martin, LLP

IP Newsflash December 2009 : U.S. Trademark Registration

12.01.2009

Differences Between the Principal Register and the Supplemental Register

We often advise clients in the selection of trademarks and service marks. This advice often centers on characteristics of prospective marks and their position along the “spectrum of distinctiveness.” Truly distinctive marks are more powerful and legally protectable than marks that have some descriptive characteristics.

The spectrum of distinctiveness ranges from generic marks (which are not protectable), to descriptive marks (which are only protectable if the mark acquires distinctiveness), to suggestive, arbitrary, and coined marks (all of which are protectable). If a mark is deemed “merely descriptive” by an Examining Attorney at the U.S. Patent and Trademark Office (USPTO), the application for registration will be rejected. A registration cannot be obtained unless the applicant proves that the mark has acquired distinctiveness by use over time, or convinces the Examining Attorney that the mark is really suggestive or arbitrary or coined, or changes the application from the Principal Register to the Supplemental Register.

The USPTO maintains two separate registers for trademarks: the Principal Register and the Supplemental Register. A U.S. trademark or service mark registration application usually seeks registration on the Principal Register. If the Examining Attorney deems a mark to be “merely descriptive,” he or she may reject registration on the Principal Register and suggest registration on the Supplemental Register.

Some examples of marks that were recently registered on the Supplemental Register (and thus were deemed by the USPTO to be merely descriptive) include:

  • SHOWFINDER, for computer software for allowing a user to search for movies.
  • HOLLYWOOD EDITORIAL, for editing or recording of sounds or images.
  • HOOKLESS, for clothing, namely, jackets, flying jackets, etc.
  • BOARD BUSINESS REVIEW, for downloadable electronic publications about business.
  • THE WONDER DRUG, for analgesic, anti-pyretic and anti-inflammatory preparations.

The typical choices to address a rejection of registration on the Principal Register are either to (a) argue with the Examining Attorney (via interview and/or a written response) that the mark is not “merely descriptive” but is suggestive of some attribute about the goods or services, and thus should be registrable on the Principal Register, or (b) assemble and submit evidence of acquired distinctiveness, (sometimes called “secondary meaning”), or (c) amend to the Supplemental Register. The cost and effort of options (a) and (b) is typically significantly more than that of option (c), amending to the Supplemental Register.

What are the differences between these two registers, and which option should you choose?

Principal Register – Registration on the Principal Register is desirable for several reasons:

  1. Confers the right to use the registration symbol ®.
  2. Makes the mark “findable” by search engines and tools, so that third parties selecting their new marks or registrations can find your mark – and hopefully be dissuaded from adopting a mark similar to yours.
  3. Provides constructive notice of the registrant’s claim to ownership of the mark. 35 U.S.C. § 1072.
  4. Registration establishes constructive use of the mark since the filing date of the application and confers a right of priority nationwide in effect, subject to certain limitations. 15 U.S.C. § 1057(c). This means that the registrant can prevent another person or entity from using the same or a confusingly similar mark anywhere in the U.S. (subject to the other mark having been used before the date of first use of the registered mark).
  5. Serves as prima facie evidence that the registration is valid, that the registrant owns the mark, and that the owner has the exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b).
  6. After five years of continuous use in commerce, the registration becomes incontestable, which means that the registration cannot be canceled by a third party on the basis of prior use or descriptiveness. 15 U.S.C. §1065.
  7. The owner of the mark may sue for trademark infringement in federal court regardless of diversity jurisdiction. 15 U.S.C. § 1121(a).
  8. In a successful trademark infringement action, the owner may obtain increased (treble) statutory damages. 15 U.S.C. § 1117 and 18 U.S.C. § 2320.
  9. The owner may prevent the importation of goods that contain infringing marks. 15 U.S.C. § 1124.
  10. Certain rights under international treaties (the Paris Convention) that assist registration of the mark in foreign countries.

Supplemental Register – registrations on the Supplemental Register only have four of the benefits afforded registration on the Principal Register:

  1. Confers the right to use the registration symbol ®.
  2. Makes the mark “findable” by search engines and tools, so that third parties selecting their new marks or registrations can find your mark – and hopefully be dissuaded from adopting a mark similar to yours.
  3. The owner of the mark may sue in federal court regardless of diversity – but must be prepared to prove ownership of the mark and litigate the question whether the mark is “merely descriptive” as well as the question of infringement.
  4. The owner has rights under the Paris Convention that assist foreign registration of the mark.

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Trademark registration applicants must weigh the benefits of registration on these two registers against the cost and effort of arguing with the Examining Attorney or submitting evidence of acquired distinctiveness (which in and of itself can be expensive, and may not be possible or successful). The seal of the United States Patent and Trademark Office

Many applicants elect to amend to the Supplemental Register if the allegedly descriptive mark is for a secondary product or service offering. A “flagship” product or company name may be worth fighting for by submitting arguments in favor of registrability, or assembling evidence of acquired distinctiveness if the mark has been in use for a number of years.

Because of the differences in benefits between marks registered on the two USPTO registries, we strongly advise that clients seek to select, adopt, and register arbitrary (or fanciful), coined, or suggestive trademarks and service marks, and try if at all possible to avoid marks that are descriptive.

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NOTE: There is a special additional complication for “intent-to-use” (ITU) registration applications. An amendment to the Supplemental Register cannot be filed for an application under Section 1(b) of the Trademark Act, which relates to ITU applications. If an ITU application is rejected on merely descriptive grounds, the applicant must first commence use of the mark in commerce and file a Statement of Use (i.e., convert the application to a “use in commerce” Section 1(a) basis), before an amendment to the Supplemental Register will be accepted by the USPTO.

John R. Harris, Partner / Author
(jharris@mmmlaw.com) 404.504.7720 (Atlanta office)

NOTE: This article represents the views of the author and does not necessarily represent the views or positions of the firm or of any of its clients. The information contained herein is of a general nature and is not intended to provide legal advice to or address the circumstances of any particular individual or entity. Although we endeavor to provide accurate and timely information, there can be no guarantee that this information is accurate as of the date it is received or that it will continue to be accurate in the future. No one should act on this information without appropriate professional advice after a thorough examination of the particular situation.