Wednesday, May 09, 2007

A Denver Colorado Trademark Attorney Answers Your Frequently Asked Trademark Questions Part III

For Answers to More Questions Click Here

Ok, I have been so consumed with writing content to expand the useful content displayed on our main Website , that I have kind of neglected the blog. Never fear, we are back with the next installment of answering your frequently asked questions. This next one was actually inspired by a comment that was left on one of the earlier trademark articles.

Q: I have heard of something called the supplemental register. What is it?

A: In the federal system there are actually 2 registers that a mark or potential mark can appear on. The first is the Principal Register, which contains marks that as of the date of registration actually function as marks. Usually this means that the term identifying the goods or services must be inherently distinctive or has acquired secondary meaning. The second is the Supplemental Register, which is for marks that have the potential to be on the Principal Register, but have not quite made it yet.

Marks that are inherently distinctive are generally placed into 2 categories 1) fanciful or 2) arbitrary. Fanciful marks are marks that have no inherent meaning. Examples of fanciful names, Google (the word Google is based on an actual number, but the word itself is meaningless), Kodak, Xerox, Dell etc. Arbitrary marks are words that exist and have meaning, but are applied to goods in an arbitrary manner (i.e. they have no relation to the goods). A good example of this is Apple for computers. In general inherently distinctive marks are given the widest breadth of protection and are the easiest to register.

A step down from inherently distinctive marks are those that contain various levels of descriptive terms. If those terms are incidental to the mark in general, the registrant can usually get by with a disclaimer stating that they do not claim exclusive use of the terms except as they are used in the mark. If the mark itself is descriptive of the goods or services, the mark will most likely be labeled merely descriptive by the patent and trademark office. Merely descriptive marks may be registered on the principal register upon a showing of secondary meaning or acquired distinctiveness. Basically the theory of secondary meaning and acquired distinctiveness is that sure, the mark describes the goods or services, but through my extensive marketing and the name recognition of my products, when you say the term “XYZ” , they do not think of the type of goods or services being described, they think of my goods and services. It is up to the applicant to prove secondary meaning or acquired distinctiveness, by showing marketing expenditures, name recognition and consumer opinion surveys, and the length of time the mark has been used in commerce. If a mark has not yet achieved secondary meaning or has acquired distinctiveness, it may not be registered on the principal register, but it may be able to be registered on the supplemental register.

Essentially, the supplemental register is a limbo for potential marks that have the ability to become marks (meaning they are not generic terms for the goods or services), but have not yet achieved the requisite secondary meaning required for the principal register. There are some advantages of going on the supplemental register while you try to build secondary meaning including:

1. Appearance in the federal database
2. Ability to use the ® symbol in connection of the mark
3. Federal jurisdiction of suits involving infringement of the trademark
4. Federal jurisdiction over state law claims of unfair competition when they are substantially
related to a claim of trademark infringement
5. Eligibility for monetary damages as provided for in the Lanham Act, including infringers
profits, damages and costs, and in appropriate cases trebled damages and attorney’s fees

However, a mark on the supplemental register is not eligible for the following benefits available to principal register marks:

1. Cannot file on an “intent to use” basis (ie must be currently using the mark)
2. A certificate of registration on the supplemental register is not prima facie evidence of the
validity of the registration
3. A mark on the supplemental registry does not have a nationwide priority against third
party users (basically your rights extend only to the geographic area you are actually using
the mark)
4. Cannot achieve incontestable status
5. Certificate of registration of a mark on the supplemental register is not prima facie evidence
of the registrant’s ownership of the mark.
6. The Certificate of ownership for a mark registered on the Supplemental Register is not
prima facie evidence of the registrant’s exclusive right to use the mark in commerce on the
goods or services contained in the registration
7. Supplemental Register registrations cannot be registered with U.S. Customs for the
purpose of preventing the importation of infringing or counterfeit merchandise bearing the

Depending on the circumstances Supplemental Register may be a good idea and give you and your business some advantages. However, it is important to be familiar with the potential short comings of the registration. In the end, really it’s better than nothing and usually is a good place for marks to reside, while they are building their required secondary meaning. Of course a wise strategy is to choose marks that are arbitrary or fanciful and they you don’t have to deal with the situation in the first place.

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