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Archives For November 30, 1999

Why the USPTO Supplemental Register Matters to You

June 24, 2014 — 2 Comments

If you’ve explored the trademark database maintained by the U.S. Patent and Trademark Office you might have seen some marks filed on the “Supplemental Register” rather than the “Principal Register.” While the differences may not seem too great on their face, the rights associated with each registry are quite different.

The Principal Registry

The Principal Registry is a registry of federally protected trademarks. Once registered, a mark owner may:

  1. Begin using (R) on the registered mark;
  2. Obtain greater damages in an infringement action;
  3. Use the registration to seek protection in foreign countries;
  4. Use the registration to prove constructive notice of ownership; and
  5. File for incontestable status after five years.

The Supplemental Registry, on the other hand, doesn’t offer all of those benefits.

The Supplemental Registry

The most common reason a mark ends up on the Supplemental Registry is because it was rejected for the Principal Registry due to a number of reasons such as descriptiveness or use of a surname or geographical term.

Unfortunately, the owners of marks on the Supplemental Registry only receive benefits 1, 2, and 3. Those owners can’t use the registration to show constructive notice and they can’t seek incontestable status. Further, their acceptance of the Supplement Registry implies they know their mark is week due to descriptiveness or another registration hurdle. Thus, the registration might scare away some potential infringers, but it won’t help too much in any infringement litigation.

The key requirements to obtain a Supplemental Registry registration are quite simple: the owner must be using the mark in commerce and it cannot be generic because generic terms don’t have the effect of serving as a source identifier.

What You Should Consider

If your mark isn’t suitable for the Principal Registry, you should consider seeking protection on the Supplemental Registry because even a Supplemental Registry registration can be used to scare off potential infringers. However, it should be remembered that if you are trying to build a brand based on your mark, the Supplemental Registry isn’t a good long-term tool to achieve that goal. Rather, you should begin using a brand/mark that is protectable on the Principal Registry to better protect your rights and the real value of your brand.

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Image: Thinkstock/Vladimirs

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Why You Can’t Trademark a Descriptive Term – The “Hot Yoga” Example

May 13, 2014 — Leave a comment

We’ve mentioned previously that names and slogans may not be protected unless they are distinctive and capable of identifying a particular source of the good or service.

The reasoning behind this section of the Trademark Act is simple: if businesses were able to obtain exclusive rights to descriptive or generic terms, then competitors would be unable to describe their goods and services to the market. For instance, if a restaurateur obtained a trademark for “Restaurant” his competitors (the rest of the restaurant business) would be unable to call their restaurants by that name.

A great example found in the United States Patent and Trademark files is the Hot Yoga application.

The “Hot Yoga” Trademark Application

California based Bikram’s Yoga College of India attempted to register the phrase “Hot Yoga” in connection with education services for yoga. Of course, it is obvious that the phrase simply describes the service itself – that is, yoga in a hot room.

Not surprisingly, the USPTO issued an Office Action (an official document issued by the USPTO to explain problems with a trademark application) denying the application because it was descriptive. In quoting from case law, the trademark examiner said that a mark is merely descriptive “if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.”

The examiner explained the reasoning above in the Office Action and concluded that descriptive marks may not be registered because “businesses and competitors [must] have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.”

Arbitrary is Better

As a result of this limitation, many attorneys advise clients to be as arbitrary as possible when naming products and services. The more arbitrary and unconnected a phrase is from a particular good or service, the more likely the USPTO is to grant protection. One problem with this tactic, however, is that arbitrary marks are sometimes not very marketable because they do not describe the product or service and thus are more difficult to attract customers.

In practice, many business owners simply go somewhere in the middle and use a term that is partially arbitrary, but also partially descriptive. These trademarks suggest the good or service to the customer without being overly descriptive. Businesses then take their chances with a trademark application.

Secondary Meaning

One last tip: in some cases a company can obtain trademark protection for descriptive terms. For example, “Sharp” in connection to the sale of televisions. While that mark is descriptive of televisions, the name has obtained enough recognition in the market (a secondary meaning) to overcome the descriptive limitation. But we’ll cover this more in a future post.

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Image Credit: Thinkstock/Anna Berkut

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Intent to Use: How to Protect a Trademark Before Actual Use

May 6, 2014 — 4 Comments

In an earlier post we mentioned that actual use in commerce is a prerequisite to obtaining federal trademark protection. But when you spend time and money building a brand before you actually open for business, you’d sure like to get protection up front. The good news is you can do just that with an Intent to Use application.

An ITU application essentially holds your place in line. If you have a bona fide intent to use the mark in commerce then you can file the ITU application. The filing fee is the same as a regular application but there are additional fees as you move forward through the process.

The Timeline

In most cases the USPTO will respond to your application in about three months. If the application is approved, it will move through the opposition process and, if unopposed, you will receive a Notice of Allowance. That notice sets in place your next filing deadline.

Within six months of the issuance of that notice, you must file a Statement of Use (the fee is $100).

If you aren’t actually using the mark before that deadline expires, you can extend the deadline an additional 6 months by requesting an extension and paying $150. And if you need, you can make 4 additional extension requests (each one costing $150).

As a result, an ITU application can hold your place in line for quite a while, but the fees add up over time. And you have to be careful not to miss a deadline; otherwise you might lose your priority to another applicant.

Abandonment of an ITU Application

Each deadline is very important because, if you miss any one of the deadlines, the USPTO will send you a Notice of Abandonment. This means you must either revive the application (if you act quickly and pay additional fees) or you must start all over.

Next Steps

If you have questions about which type of application you should file or if you want assistance with your application, reach out to the Mighty Marks team today to discuss your options!

Image Credit: Thinkstock/digitalgenetics

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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