By: Vivek Vaidya
A trademark can be registered with the United States Patent and Trademark Office on either the principal or supplemental register. Registration on the principal register provides more trademark protection than on the supplemental register. However, there are a host of benefits for registering the mark on the supplement register if it does not meet the requirements of the principal register.
A trademark can register on the principal register if it is fanciful, arbitrary or suggestive. A fanciful mark is a made up word, such a Kodak for cameras. An arbitrary word is one that has meaning, but not in association with the goods or services it is connected to as a trademark. A famous example of an arbitrary trademark is Apple for computers, as the fruit has nothing to do with computers. A suggestive trademark is one that suggests the type of good or service with which it is associated, but still requires consumers to make some sort of connection in their own mind. An example is Microsoft, which is suggestive of being used in association with software for microcomputers but still requires an individual to think for a moment in order to realize the relationship between the word and the goods.
While fanciful, arbitrary, and suggestive marks can all register on the principal register, a descriptive mark cannot. A descriptive mark is one that describes the goods or services with which it is associated. One of the reasons that a descriptive mark cannot register on the principal register is the USPTO’s fear that one party will have a monopoly over a commonly used word in a particular industry. For example, the trademark Homemade Ice Cream for an ice cream shop describes exactly the goods and services associated with the trademark. However, businesses still like to use descriptive marks because it can be a great marketing tool that attracts customers, even if the trademark does not have strong legal rights.
This is where registration on the supplemental register comes into play; descriptive trademarks can be registered on the supplemental register.
While registration on the supplemental register does not provide a presumption of ownership throughout the United States, it is still a federal registration that prevents other similar trademarks from registering with the USPTO, even on the principal register. There is also the deterrent effect, as new businesses who see a trademark registered on the supplemental register will likely not use the mark to avoid a legal dispute. Therefore, there still are good reasons to register a trademark on the supplemental register, even if it is descriptive and cannot be registered on the principal register.
If you would like help registering your trademark on the USPTO’s principal or supplemental register, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 633-6841, or email us at info@blgtrademarks.com.
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