by Usman Shaikh
As the number of startups in the U.S. exponentially grows and more innovative and disruptive businesses pop up all around us, founders are now more than ever protecting their brands and goodwill from competitors. Federal trademark registration is the primary protection for these businesses’ names and logos and, as a result, the number of trademark applications submitted to the United States Patents and Trademark Office (USPTO) has increased drastically over the past few years. Statistics show that almost half of all trademark applicants are usually granted trademark registration, with the rest being rejected by the USPTO. Does that mean that if your startup is on the wrong side of that 50%, then you permanently lose the opportunity to obtain a federal trademark and protect your business’ intellectual property? Well, not necessarily; you may be able to find federal protection under the little known (yet powerful) tool for startups to register trademarks, the Supplement Register.
As a default, federal trademarks are registered on the USPTO’s Principal Register. So when you hear of a company recently registering a trademark, it’s most likely on the Principal Register. In contrast, having your mark registered on the Supplemental Register is roughly analogous to being on a waitlist; you are basically reserving your future spot on the Principal Register until your mark obtains sufficient “distinctiveness.”
One of the most common reasons for a business to have its trademark application rejected on the Principal Register is for a lack of distinctiveness. A mark is distinctive (and, therefore, qualifies for federal trademark registration) if it is capable of being an identifier of that business. Some marks are considered “inherently distinctive” and, thus, almost always satisfy this requirement. Words or symbols made up by their owners (such as “Spotify”), which have no other meaning in natural language, are a primary example of inherently distinctive marks known as “fanciful marks.” Words that have a common meaning but no relation to the goods or services being sold (for example, “Amazon” for an online store), are inherently distinctive and known as “arbitrary marks.” In addition, words or symbols that give a hint as to a quality or characteristic of the goods or services being sold (such as “Netflix”, which suggests watching flicks on the internet) are inherently distinctive marks known as “suggestive marks.”
If a startup’s trademark falls into one of these three categories and is, therefore, inherently distinctive, it stands a good chance to be granted registration on the Principal Register. If, however, it does not fall into these categories, the USPTO may reject the trademark for lacking distinctiveness because it is “merely descriptive” or “geographically descriptive”. A merely descriptive mark is, as the name suggests, one that simply describes the goods or services being used in connection with that mark (for example, “International Business Machines” or “IBM” was initially considered merely descriptive). A geographically descriptive mark is one that describes the geographic location or origin of the goods or services (such as, “Texas Instruments”). Such marks would be denied registration on the Principal Register, but the owner of the mark could still file the application on the Supplemental Register and qualify for registration with the USPTO.
The only requirement for obtaining registration on the Supplemental Register is that the mark is capable of acquiring “secondary meaning” (and, thereby, no longer lacking distinctiveness) after a period of five years. Secondary meaning is achieved when consumers attribute the mark to a particular its goods or services. To prove secondary meaning, the owner must demonstrate that consumers associate the mark with only the goods or services provided by that business and not any competitor by using the mark exclusively (meaning, no one else is also using the mark) and continuously in the course of business for five years. At that point, the mark may be eligible for federal registration under the Principal Register.
Once you’re on the Supplemental Register, you will not have the full package of rights that the Principal Register confers, but will still have certain benefits. First, you will be able to place an ® sign near your mark to discourage potential infringers. Second, you may be able to easily register your mark in a number of foreign countries. Third, you will be able to sue an infringer in the more favorable federal courts as opposed to state courts which is the only path available for owners of unregistered marks. Lastly, and most importantly, the USPTO may reject the same or similar marks that are filed with the Principal Register after your Supplemental Register filing.
The Supplemental Register is a powerful tool and allows the entrepreneur whose trademark which, at its inception, inherently lacked distinctiveness but has slowly gained goodwill with consumers over time to finally gain full protection under federal trademark law. So if your trademark application was rejected because of a lack of distinctiveness, it doesn’t mean your business is out of luck. Partial federal protection is still available through the Supplemental Register and confers enough protective benefits until the trademark acquires secondary meaning. Once the mark acquires secondary meaning, the path to the Principal Register, and subsequently full federal protection, becomes much easier.
U.S. Law Group‘s Intellectual Property practice group counsels clients on securing and protecting their trade and service marks in an effort to maximize brand value. Led by Managing Attorney Usman Shaikh, the firm’s attorneys specialize in clearing availability and registering federal applications in the U.S. and abroad for individual trademark owners and recognized brands in a wide variety of industries. To learn more about our Intellectual Property practice group, please visit our site.