But I don’t want to change my brand name: My solution for clients who want to trademark names that may be too descriptive.
Most owners of trademarks want their marks to be registered with the principal register with the United States Patent and Trademark Office (USPTO) because the principal register provides owners with the most protection. The principal register is the most desired register because once your mark is registered, it puts everyone on notice that the mark owner is the presumed owner of the mark in all 50 states. This means that if someone sues you for infringement or the likelihood of confusion after your mark has been successfully registered with USPTO, you are presumed to be the owner of the mark and it will be very difficult for someone who is not you to prove that you do not own the mark.
What is the difference between the Principal and Supplemental Register?
The principal register is reserved for trademarks that are unique or distinctive. Trademarks are unique or distinctive when the marks are arbitrary, suggestive, or fanciful. I have provided you with the different types of distinctive marks and their definition and examples below:
|Types of Distinctive Marks||Definition||Examples|
|Arbitrary||The trademark uses a well-known word as a trademark for goods and services that are unrelated to the word||SHELL for gasoline
Apple for computers
|Suggestive||The trademark is one that suggests something about the goods or services that will be offered||JAGUAR cars
(We can use our imaginations to infer that JAGUAR cars are fast)
|Fanciful||A trademark that is created and has no meaning. It is a made-up word.||Pepsi
The more that your trademark describes your products or services, the less likely you are going to be able to get it on the principal register, and this is why the supplemental register exists.
The supplemental register is a great home for marks that have the potential to be rejected or have already been rejected by the Examining Trademark Attorney for descriptiveness. A mark is descriptive if the mark describes the product, goods, or services associated with the mark. An example of a descriptive mark is “Donut & Coffee Shop”. This mark is descriptive because upon hearing the mark “Donut & Coffee Shop”, it does not take consumers much imagination to associate the mark with a shop that sells donuts and coffee. In order to move past the hurdle of being descriptive, a mark owner must show that their mark has “acquired distinction.” The supplemental register allows trademark owners to acquire distinctiveness, which occurs when the trademark owners can finally show proof that consumers exclusively associate their goods and services with the descriptive mark after five years.
Although, you will not have the presumption of federal ownership like marks in the principal register there are benefits to supplemental registration. You are still able to use the circled R “®” on your goods, products, and services which will put people on notice that you have a federally registered trademark. Your mark will appear in trademark searches with USPTO. Additionally, the registration number of a supplemental registration is consecutive with marks on the Principal Register. This means that people will not be able to distinguish whether your mark is in the supplemental or principal register alone. Furthermore, by registering a mark with the supplemental register, the trademark owner will have priority over another trademark owner who wants to use the same mark for the same goods or services. In order to register your mark with the Supplemental Register, your mark has to already be in use in commerce. You cannot register a mark with the Supplemental Register if it is not in use and in commerce.
This is a great alternative to getting your mark registered even if it is descriptive.