DESCRIPTIVE TRADEMARKS

A descriptive trademark is one that merely describes the goods or services associated with the mark and may not be eligible for trademarking on the principal registry. For example, a trademark for “Creative Collective” for a business that provides creative services would likely be deemed descriptive and not eligible for trademarking on the principal registry — the traditional trademark registry with all the normal rights associated with owning a trademark .

However, descriptive trademarks may be eligible for registration on the supplemental registry.

SUPPLEMENTAL REGISTRY

Trademarks registered on the supplemental registry are afforded some, but not all, of the rights and protections associated with marks registered on the principal registry. Specifically:

• Right to Use the ® Symbol - The owner of a mark on the supplemental registry can use the ® symbol in connection with the trademark to put others on notice of their claim to the mark;

• No Presumption of Ownership - However, the owner of a mark on the supplemental registry does not have a legal presumption of ownership to the mark — meaning they are more vulnerable to attacks from others who may have claims to the mark and are in a weaker position to try to stop others from using the mark;

• USPTO Protection - Still, the registration will show-up in conflict searches on the USPTO database and may deter others from attempting to use the name, and the USPTO will reject other applications that they deem too confusingly similar.

• Rights to Damages - If the owner of a mark on the supplemental registry wins a trademark infringement case in court they will be entitled to more damages than they would if they did not have the mark registered.

• Eligibility to Move to Principal Registry - Finally, a mark registered on the supplemental registry is eligible to move to the principal registry once the owner can show the mark has acquired sufficient distinctiveness through use in commerce (which may take about 5 years). Note that additional legal and government fees would be likely be incurred at that stage.

So, ultimately the supplemental registry can be a reasonable stepping stone toward full registration on the principal registry when such registration might not otherwise be possible. However, it may also be an unnecessary snag that can be avoided by picking a different name that is eligible for full trademark registration on the principal registry.

GENERIC TRADEMARKS

Finally, one risk worth noting is that certain marks are so descriptive that they are deemed generic and are not eligible for registration on any registry. For example, if one tried to trademark “Creative Services” for a creative services company, that would be deemed generic, and the application would likely be rejected in-full. While that example may be obvious, there is risk that a descriptive mark gets flagged for being generic and is rejected by the USPTO without eligibility for any registration.

Need help?
 

This article is for informational purposes only and is not legal advice.