Demystifying Trademark Registration: A Beginner's Guide

You are a savvy business owner so you know that a trademark registration is an invaluable asset for your brand.   You may not have known that trademark registration is not a one-size-fits-all asset as there are two federal trademark registers. Read on to learn more about the federal trademark registers and how registration on either register can protect and grow your brand.  

The Principal Register and the Trademark Continuum

There are two trademark registers: (1) a Principal Register; and (2) a Supplemental Register.  The most coveted register is the Principal Register. A brand registered on the federal principal register is afforded protections like:

• Presumption of ownership and validity: Your mark is considered legally owned and valid, making it easier to enforce your rights in court.
• Nationwide protection: Your mark is protected throughout the entire United States, not just in specific regions.
• Exclusive right to use: You have the exclusive right to use the mark for the goods or services listed in your registration.
• Sue in federal court: You can file infringement lawsuits in federal court, which can be more efficient and costly for infringers.‍
• Public notice: Your mark is published in the USPTO database, informing others of your ownership and discouraging infringement.‍
• Use of ® symbol: You can use the ® symbol with your mark, showing others it's registered and strengthening your brand image.‍
• Basis for foreign registration: Your registration can be used to register your mark in foreign countries.‍
• Incontestable status: After five years of continuous use, your registration becomes nearly impossible to challenge.‍
• Record with CBP: You can record your mark with U.S. Customs and Border Protection to stop imports of infringing goods.

For applicants whose mark is not ripe for the Principal Register, the Supplemental Register can offer a pathway to protect your brand. A brief explanation of the trademark continuum and what makes a trademark strong or weak is instructive. Fanciful marks are the strongest on the continuum.  Fanciful marks have no other meaning or association beyond the trademark e.g. EXXON, KODAK, SAMSUNG. Arbitrary marks are the next strongest on the continuum and use existing words out of context, e.g. APPLE. Suggestive marks are mid-strength on the continuum, and, while suggestive of goods or services, still require some leap of thought on the consumer's part.  Examples of suggestive marks are HOME DEPOT, SHOPIFY, and DROPBOX. On the weak end of the continuum are descriptive marks that merely describe the good or service with which they are used.  Descriptive marks like BANK OF AMERICA and SHARP electronics are generally ineligible for the Principal Register, except they can become strong recognizable brands - more on this below.  Generic marks are marks that cannot serve the core trademark function of identifying goods and services because they are too common. Marks like YO-YO and ASPIRIN started out as strong marks but became so popular they became generic over time.

Strong brands by way of the Supplemental Register

Descriptive marks are generally ineligible for the Principal Register. However, they can be registered on the Supplemental Register until they acquire distinctiveness and become eligible for the Principal Register. Here are some examples of "weak" marks that became strong over time:

Bed Bath & Beyond

• Initially considered descriptive because it merely described the goods and services offered (bed and bath items, and a wide selection of products).
• Acquired distinctiveness through extensive use and advertising, establishing a strong brand recognition among consumers.
• Now a registered trademark on the Principal Register, enjoying full protection.

American Airlines

• Originally deemed geographically descriptive, as it directly indicated the geographic origin of the airline.
• Gained distinctiveness through widespread use and consumer recognition, becoming a well-known brand associated with specific airline services.
• Subsequently registered on the Principal Register, securing robust trademark protection.

Hotels.com

• Initially considered descriptive because it merely described the services offered (online hotel booking).
• Achieved distinctiveness through substantial use and advertising, establishing a unique brand identity in the online travel industry.
• Now a registered trademark on the Principal Register, enjoying comprehensive protection.

7-Eleven

• Originally deemed descriptive because it merely indicated the store's hours of operation (7 am to 11 pm).
• Achieved distinctiveness through consistent use and branding, becoming a recognizable convenience store chain with a unique logo and color scheme.
• Now a registered trademark on the Principal Register, enjoying full protection.

These are just a few examples of how the Supplemental Register can inform a winning IP portfolio strategy.  The Supplemental Register still provides a trademark registration asset, still confers the right to sue in federal court, and still archives your mark to be included in every trademark search after the filing date of your application.  The main benefits of protecting your mark on the Supplemental Register are the following:

• Right to use the ® symbol: You can use the registered trademark symbol to put others on notice of your claimed rights and deter potential infringers.
• Protection against confusingly similar marks: Your registration can block the registration of marks that are likely to cause confusion with yours, even if they aren't identical.
• Basis for foreign registration: In some countries, registration on the Supplemental Register can be used as a basis for obtaining trademark protection.
• Public notice: Your mark will be listed in the USPTO database, which can help prevent others from adopting similar marks.
• Potential to move to the Principal Register: If your mark acquires distinctiveness through use over time (usually 5 years), you can apply to have it registered on the Principal Register, where it will receive stronger protection.
• Enhanced enforcement: While you can't sue for infringement in federal court solely based on Supplemental Register registration, it can still be used as evidence of your rights in state courts or in proceedings before the Trademark Trial and Appeal Board (TTAB).

Conclusion

If you file an application to register your trademark based on your actual use of the mark in commerce, your application should result in a registration.  If you had your heart set on the federal Principal Trademark Register and learn your mark is not eligible, all is not lost - quite the opposite!  The federal Supplemental Trademark Register offers many of the same benefits of the Principal Register and can protect your brand's mark or marks as they gain distinctiveness through use. Ready for Tinch Law Firm to help your venture synthesize a strategy to protect your brand? Book a complementary pre-strategy meeting.