Considering registering your brand name and want the most protection?
The US trademark office has two registers that trademarks can be registered on, the Supplemental and the Principal register.
For your mark to get on the principal register, your mark must be distinct and unique. The principal register is reserved for the most unique marks. Made up words like Xerox, Uber, or Kodak are all examples of words not found in the dictionary but function as strong trademarks. A registration on the principal register tells the world that you the presumed owner of the trademark in all 50 states.
The more your trademark describes your protect or service, the less likely your mark is going to be approved for registration on the principal register, but may be eligible for the supplemental register. An example if your business name is Cheesy Pizza Pies, that business name will likely be deemed to be descriptive and will not be approved for use on the principal register.
A trademark being registered on the supplemental register is not necessarily a bad option. The supplemental register still provides your brand with federal protection and benefits until your brand name becomes more distinct in the marketplace. You can still use the trademark “circle R” ® symbol and sue in federal court for infringement.
The drawback is that there is no legal presumption of ownership because a mark is presumed to be non-distinct when it is on the supplemental register. So while you can sue, it may be harder to sue in federal court.
A mark originally registered on the Supplemental register, may be registered on Principal Register if the applicant can demonstrate the mark has acquired distinctiveness or has developed secondary meaning. A mark acquires distinctiveness or secondary meaning when it is used continuously in the marketplace for at least five years, among other offers of proof, including the fame or notoriety of the mark or declarations from third parties that the mark has become distinctive. This evidence is essential for the mark to be approved for publication on the Principal Register.
So what are you options if the trademark office deems your business or brand name “merely descriptive”
1. Appeal the refusal to through office actions or the Trademark Trial and Appeal Board.
2. Accept that your brand or business name is descriptive and provide evidence that is “acquired distinctiveness
3. Accept registration on the supplemental register
4. Abandon the application
Need help in determining if your name qualifies for the supplemental or principal register?
Contact Littlejohn Law Offices today to start bulletproofing your brand!