A Tale Of Two USPTO Registers
The United States remains the leader when it comes to the world economy and for many businesses who are scaling up, entering the US market with their goods or service is the holy grail.
An essential contributing factor to the high level of trademark activity at the United States Patent and Trademark Office (USPTO), is its unique offering of two, rather than only one, register.
Trademark registrability: the fundamental proposition
It is often useful to think about complex legal doctrines from a meta-objective perspective; instead of asking, what is the law, consider asking, what is the purpose of the law? Trademark jurisprudence is no different.
If you register your trademark, the mark or sign that you register will officially distinguish your product or service from all others and will help to protect your brand in the territories that your goods or services serve.
In determining whether or not a prospective mark will be eligible for protection from the USPTO, it is worthwhile to consider the essential purpose of a trademark. The fundamental purpose of a trademark registration is to ensure that an applicant with a sufficiently unique name/logo/slogan vis-à-vis his goods/services maintains his proprietary right to use the mark. Thus, trademarks must be both distinct, given the goods/services, and original.
This article will consider the “distinct” aspect of the mark and how the USPTO awards or denies trademark protection accordingly.
Trademarks, which may be a name, logo, sound, or slogan are eligible for obtaining trademark rights according to their distinctiveness. The more unique the mark, the more trademarkable - and the less unique, the less trademarkable.
Consider for the moment a lumber company that wants to call itself “Wood.” Quite obviously, there is nothing distinct about this brand name (the name is the product) and thus it is generic and unworthy of trademark protection. Less obvious are those marks, which in a more subtle way, describe the goods/services sold under the mark. For example, an iron company that wants to trademark its company name “Hard”. Well, “Hard” is not a word, which is synonymous to the product, like “Lumber”, is to a wood company, and yet presumably, the iron being sold by the company is indeed, “Hard”. Thus, “Hard” would be a descriptive trademark and therefore at least superficially, ineligible for protection.
USPTO principal and supplemental registers
What is less commonly known is that the USPTO actually maintains two different registers; the Principal Register and the Supplemental Register.
The Supplemental Register, which was established by the U.S Trademark Act, permits registration of those marks (like “Hard” in our example above), which would otherwise be too descriptive to qualify for registration in the Principal Register. Indeed, the Supplemental Register was explicitly designed to award at least a rudimentary level of protection to descriptive marks.
Making use of the supplemental register
A trademark usually winds up on the Supplemental Register after an examining attorney at the USPTO determines a prospective trademark is merely descriptive and is ineligible for the Principal Register. The examining attorney will then issue the applicant an Office Action, citing Section 2(e)(1) of the Trademark Act, and if the applicant so desires, he/she can either respond to the Office Action explaining why the mark is not in fact descriptive or, petition the examining attorney to allow the mark to publish to the Supplemental Register instead.
An intent-to-use trademark application cannot be listed on the supplemental register
The Supplemental Register is reserved for trademarks already in use; therefore, if the applicant has applied under a 1(b), intent-to-use designation, the Supplemental Register is not an available option and the applicant must first provide a Statement of Use (showing that the mark’s Use in Commerce) before seeking harbor in the Supplemental Register.
Have a color trademark?
The Supplemental Register may be where you need to start. The Christian Louboutin shoe with its dazzling red bottom is arguably the archetype symbol of wealth and affluence. The mere flash of this iconic red is enough to convey deep material prosperity and for good reason; a single pair of Louboutin shoes can cost in the thousands of dollars.
While Louboutin might argue that a customer is paying for the quality of the shoe, the reality of course, is that one is paying for the red bottom and all of its associated wealth and social implications. The red bottom is quite literally the perfect trademark, which immediately communicates to the consumer the source-company of the shoe. And yet, it does seem odd that a company has the proprietary rights to a color vis-à-vis shoes as the Louboutin vs. YSL court case established.
But here, the devil is indeed in the details. Trademark law notoriously does not allow for the de facto, exclusionary right to a certain color except under a limited set of circumstances. Colors may be trademarkable if the color serves the fundamental purpose of identifying the source of the product to which the color is attached (as the Louboutin red bottom surely does) and if the color is neither functional nor decorative. Thus, in the Louboutin case, the “Red” trademark, was specifically limited in scope to the application of red on the bottom of the shoe rather than to the entire shoe. Simply, under the Court’s ruling, Louboutin cannot prevent other shoe companies from creating an entirely red shoe but they can prevent a company from creating a shoe with a red bottom.
Circling back to the immense utility of the Supplemental Register, color marks, if granted at all, require proof of Secondary Meaning (a demonstration of wide-spread commercial recognition of the mark in commerce). If the applied for mark cannot yet marshal proof of Secondary Meaning, the mark may be registered on the Supplemental Register until Secondary Meaning has been established and the mark can assume its rightful place on the principal Register.
Moving on to the principal register
A descriptive trademark can then move from the Supplemental Register to the Principal Register. Registering on the Supplemental Register is one step in the long journey of a descriptive trademark ultimately gaining full, Principal Register-protection. A descriptive trademark in continuous use for five years after registering on the Supplemental Register may be eligible for inclusion on the Principal Register if certain conditions are met.
Advantages of trademarks appearing on the supplemental register
While the Supplemental Register does not provide a trademark owner with the full protections afforded by the Principal Register, there are still a variety of reasons to seek the safe harbor of the Supplemental Register. Perhaps most importantly, the trademark holder can use the eminently powerful and recognized, ® symbol, next to the mark. Merely displaying this symbol alerts potential competitors that the mark is protected.
Other advantages include providing the applicant with the right to bring infringement suits to Federal Court, stopping (to a certain extent) the registration of confusingly similar marks, and providing a basis for filing the mark in a foreign country.
Disadvantages of registering a trademark on the supplemental register
Undoubtedly, trademarks registered on the Supplemental Register lack many of the enforcement tools afforded to those marks, which are successfully registered on the Principal Register. Most notably, a third party-opposer can file a cancellation proceeding against a Supplemental-registered mark at any time during the registration, as long as the opposer can show earlier use of a sufficiently similar mark or indeed any other traditionally recognized cause for cancellation.
The Supplemental Register is meant to provide a safe harbor for those marks, which are otherwise “Merely Descriptive” and therefore ineligible for registration on the Principal Register. It permits the use of the registration symbol ®, thus fending off potential infringers, allows for at least a rudimentary level of protection against the later registration of confusingly similar trademarks and finally, it manages all of these things while the mark acquires “distinctiveness”. In sum, the Supplemental Register is a fantastic and powerful resource when properly taken advantage of.
Non-traditional trademark applications (like color, sound and smell) are on the rise. Our new eBook contains analysis and insights of five significant case law based trends as well as three dispute trends in both the USPTO and EUIPO during 2019 and discuss the challenges concerning:
- Filing non-traditional trademarks
- The move towards more liberal evaluations during trademark examinations
- A rise in the importance of semantic similarity evaluation
- Finding the right balance in the protection of famous trademarks v other third parties, and
- Descriptiveness of a generic word coupled with a top-level domain
Get your copy today!