As a small
business owner, you may be curious about the process of registering a trademark,
also referred to as a mark,with the United States Patent and Trademark Office,
or USPTO for short. To register for federal trademark ownership, there are
certain criteria that must be met. For example, your trademark cannot be too
similar to another previously registered trademark that sells a similar type of
product or service. To ensure that your mark is not too similar to another
mark, you can search the trademark you are hoping to register on the USPTO’s
website to see what similar marks might be registered.
It is possible that the USPTO denies
your trademark registration for numerous reasons, including your trademark
being too similar to another registered trademark or your trademark being
descriptive, among other things. If your mark is descriptive, the USPTO might
suggest that you instead amend your trademark application to file your
trademark on the Supplemental Register instead of the Principal Register. American Airlines is an example of a
descriptive mark because it literally describes the company’s services and it
is an airline in America.
The Principal Register is the
primary register upon which trademarks are filed, and it is in most cases the register you hope to be on. By being
registered on the Principal Register, you acquire more rights and protections
on the use of your trademark as well as others’ use of your trademark. Strong
trademarks that are more distinctive are more likely to be registered on the Principal
Register. Trademarks that are fanciful,
arbitrary, and suggestive are considered stronger trademarks. Starbucks is an example of a fanciful
trademark because it is made up and has no meaning. The Apple trademark used for computers is an
example of an arbitrary trademark because it has a common meaning but has no
relationship with computers, the product on which it is used. The Jaguar trademark used for cars is an
example of a suggestive trademark because it suggests a quality or characteristic
of the car but requires imagination to connect the mark with the car.
If
your mark is descriptive and you cannot get your trademark registered on the
Principal Register, it may be worth filing on the Supplemental Register. This
is because the Supplemental Register awards some protections that you will not
be able to get with a completely unregistered trademark.
If you are on the Supplemental
Register, you will still qualify for the following protections:
●
The ® symbol may be used after your
mark: An unregistered mark may use the ™
symbol but may not use the ® symbol, which signifies to others that a mark is
registered.
●
Protection against registration of a
confusingly similar mark: Just as you are unable to register
a trademark that is too similar to another mark in a related class of goods,
registration on the Supplemental Register allows you to protest the
registration of a mark that is too similar to yours.
●
Ability to bring suit for
infringement in federal court: Even if you are not registered on
the Principal Register, you can take someone to court for infringing on your
trademark.
●
Ability to use registration as a
basis to obtain registration in foreign countries:
If you would like to register your trademark in a foreign country (in
compliance with that country’s laws and regulations), you may use registration
of your mark on the Supplemental Register as evidence.
While being on the Supplemental
Register may be preferable to not being registered at all, the Principal
Register has additional benefits that the Supplemental Register does not,
including:
●
Presumed notice to the public of the
claim of ownership of the mark: This is the idea that others are
put “on notice” that your mark is registered, leading to stronger claims if
there is an issue of someone infringing on your mark.
●
A legal presumption of ownership and
exclusive right to use the mark in commerce on or in connection with the
goods/services listed in the registration:
On the Supplemental Register, your rights are technically considered a
“non-mark” designation. By being on the Principal Register, you will officially
have exclusive ownership of your trademark for as long as you are actively
using the mark in commerce.
●
A date of constructive use of the
mark as of the filing date of the application:
This means that your mark is considered registered as of the date that you
filed your application, which is important for later achieving incontestable
status (which we will discuss soon).
●
Ability to file the registration
with the U.S. Customs and Border Protection, preventing importation of
infringing foreign goods: When you are registered on the
Principal Register, goods from other countries that infringe upon your
trademark rights will not be permitted to be imported into the United States of
America.
●
“Incontestable” status granted after
5 years of registration of the mark: Once your
mark has been registered on the Principal Register for 5 years, your mark is
considered incontestable. This greatly limits the defenses and arguments that
someone can use when they infringe on your trademark. One significant benefit
to this is that it becomes significantly harder for someone to challenge your
mark or to try to get it canceled.
It is worth noting that there is
always a possibility that your mark later becomes eligible for registration on
the Principal Register even if it is not initially. One example of this is if a
mark that is not currently distinctive on its own becomes distinctive of your
goods or services later on through exclusive and continuous use in commerce for
over five years. Best Buy, the electronics retail company, filed a trademark
associated with its retail services and the mark was initially considered to be
a descriptive mark. The mark later
became distinctive through its exclusive and continuous use in commerce for
over five years. Remember that this will
only happen sometimes and varies on a case-by-case basis based on the facts
surrounding your mark and your use of the mark in commerce.