The Federal Trademark Register in the United States consists of two registers, the Principal Register and the Supplemental Register. The principal register provides protection for distinctive marks or marks that have a secondary meaning. On the flip side, the Supplemental Register provides protection for non-distinctive marks that can possibly establish distinctiveness.
There a few different categories of marks. A strong mark is usually a fanciful mark, arbitrary mark, or suggestive marks. Fanciful marks are ones that are created, arbitrary marks are ones consisting of normal words with no relation to the product or services they are in relation to, and suggestive marks are those which do not describe the products or services offered and therefore commands one to utilize their imagination to link the mark to the product or service.
Marks outside of the above-mentioned marks are deemed descriptive or generic. Generic terms are not registrable at all. However, descriptive marks can develop into a trademarkable mark.
A descriptive mark can become trademarkable if it attains a secondary meaning, also known as “acquired distinctiveness” by becoming easily identifiable for goods or services. The USPTO rely on the following evidence: (1) Prior Registration, (2) Five Years of Usage, and (3) Other Evidence. Other evidence includes, but is not limited to your financial success, social media presence, sales, amount of marketing one does, and being known by competitors.
The Supplemental Register can be viewed as an alternative when an Examiner rejects a mark from being registered on the Principal Registry. USPTO Examining Attorneys usually refuse to register marks on the Principal Registry because they view them as descriptive marks. However, they have the potential to establish acquired distinctiveness on the Supplemental Register or argue that the mark has already acquired distinctives before going on the Supplemental Register. The applicant can then obtain a Supplemental Registration. If the trademark becomes distinctive in the future through acquired distinctiveness, then it is possible to obtain a registration on the Principal Register.
The Supplemental Registry delivers less protection than the Principal Registry. The Supplemental Registry does not include right to prevent the importation of infringing goods or services. Further the Supplemental Registry does not grant owners the ability to record the filing with customs to block the import of items infringing upon the mark. However, the Supplemental Registry has benefits.
The Supplemental Registry benefits include the registrant’s ability to use the registration symbol ®, prevents the registration of similar marks, and affords registrants the option to bring Federal Infringement actions to court.