With respect to strength and the ability to be immediately registered by the US Patent and Trademark Office (“USPTO”), trademarks may be seen as existing on a continuum. At one end, there are trademarks that are inherently strong and distinctive like fanciful and arbitrary trademarks. Fanciful trademarks are invented words like GOOGLE and EXXON and arbitrary trademarks are common words used for unrelated goods or services like APPLE. Generic or common word trademarks are at the opposite end of the trademark continuum.

In the middle of the continuum are suggestive and descriptive trademarks. Suggestive trademarks are less distinctive than fanciful or arbitrary trademarks, but are still considered to be strong and easily registered. A famous example is NETFLIX.

Finally, there are trademarks that are “merely descriptive.” An example might be MICHIGAN FRIENDLY FARMS. In this example, the trademark merely describes a location and the type of business. Description is the essence of a descriptive trademark. As one court phrased it, “[t]he name of a thing is in fact the ultimate in descriptiveness.” These are weak types of trademark since they do not quickly and easily identify in the minds of consumers a unique source of commercial goods and/or services.

In general, merely descriptive trademarks cannot be immediately registered with the USPTO and listed on the Principal Register. However, descriptive trademarks CAN be registered and there are many examples of descriptive trademarks currently registered and in use. AMERICAN AIRLINES is a good example.

What is Required to Register a Descriptive Trademark?

For a descriptive trademark to be registrable on the Principal Register, it must have acquired “distinctiveness.” Legally, this is also referred to as “acquired secondary meaning.” The only method for descriptive trademarks to acquire distinctiveness is substantial, sustained, and continuous use. Indeed, if one applies to register a descriptive trademark, as part of the application, one must assert to the USPTO that the trademark has acquired distinctiveness. Further, evidence must be provided supporting this claim. Note that, if a trademark has been in continuous use for five years, such is considered prima facie evidence that the trademark has acquired secondary meaning. Thus, types of evidence that might be provided to demonstrate acquired secondary meaning include:

• Proof of continuous use of the descriptive trademark for at least five years
• Proof of advertising and promotional efforts to create secondary meaning
• Surveys and polling from relevant consumers showing the trademark has acquired secondary meaning
• Statements and survey data from relevant retailers, sellers and others in the industry/field of endeavor
• Media “mentions” and other indications of public awareness

Even if the initial effort to register a descriptive trademark fails, a descriptive trademark can still be listed on the USPTO’s Supplemental Register. In simple terms, the Supplemental Register is a place where descriptive trademarks can be “parked” until they acquire distinctiveness. While a trademark is listed on the Supplement Register, its owner should continue to make efforts to give the trademark secondary meaning. That is, the trademark owner should continue to use the trademark and to advertise and promote the trademark with respect to the goods/services with which the trademark is used. The owner should also continue to collect evidence like consumer surveys and “mentions” in industry journals and other media.

Being listed on the Supplemental Register has some advantages including:

• Having priority if third parties attempt to register the same or similar trademark
• Ability to use the circle R symbol
• Ability to sue in federal court for trademark infringement
• Easing USPTO processing when the owner seeks to “convert” to the Principal Register

If you have questions about trademarks, need help creating and registering a trademark or if you are facing trademark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.