When a trademark is used in commerce, the owner can apply to have the trademark officially registered with the US Patent & Trademark Office (“USPTO”). If the application fees are fully paid, the application is complete and the trademark meets all the legal requirements, then the USPTO issues a Certificate of Registration and the trademark is listed on the Principal Register.

There are many advantages to having an officially registered trademark including:

• Actual and constructive nation-wide and world-wide notice to third parties of the trademark
• Legal presumptions of ownership, validity and exclusivity
• After a certain time, registered trademarks become “incontestable”
• Registration confers additional recoverable penalties for infringement litigation
• Ability to use the circle R symbol on goods, packaging and other materials
• Registered trademarks can be recorded with the U.S. Customs Office to combat importation of counterfeit goods
• Registered trademarks can also be listed with certain companies, like Amazon, to combat fake and counterfeit goods
• And more

However, the Trademark Office also maintains a second register — the Supplemental Register. The Supplemental Register is where trademarks (and service marks) are officially listed that are not quite legally sufficient to be placed on the Principal Register. Generally, the legal insufficiency relates to whether the trademark is distinctive enough to function as a trademark.

Trademarks are words, symbols or marks that identify a commercial source of goods or services in the minds of consumers. Distinctiveness is the key aspect of a trademark that creates its functionality. The Trademark Office and legal scholars identify five levels of distinctiveness:

• Generic
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

Generic trademarks are not distinctive at all and, as such, do not function as trademarks. For this reason, generic trademarks cannot be registered. Suggestive, arbitrary and fanciful trademarks are generally inherently distinctive and, as such, function as trademarks. For this reason, typically, these three types of trademarks meet the legal requirements for registration and are placed on the Principal Register.

By contrast, descriptive trademarks are often not very distinctive and do not function very well as a trademark. As an example, consider the trademark: MICHIGAN PRODUCE STORE. This word mark is descriptive in the sense that it identifies the type of business, where the business is located and what the business sells. But this trademark is not very distinctive.

That being said, over a sufficiently long period of time, a descriptive trademark can acquire distinctiveness in the minds of consumers. When a trademark owner applies to register a descriptive trademark, the applicant must provide evidence, like consumer surveys, showing that the trademark has acquired distinctiveness. If the evidence is insufficient, the USPTO will deny registration on the Principal Register. But, the trademark might still function enough as a trademark to be listed on the Supplemental Register. In this manner, the Supplemental Register serves as a “parking place” for the trademark while it acquires distinctiveness over time and use.

While not providing as many legal protections as registration on the Principal Register, listing on the Supplemental Register still provides substantial legal benefits. These include:

• Actual and constructive notice to third parties
• Can be used by the USPTO to reject trademark applications based on likelihood of confusion
• Registration confers ability to bring litigation for infringement
• Ability to use the circle R symbol
• And more

Contact Revision Legal

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.