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Descriptive trademarks are not registrable on the Principal register in the United States. Luckily, U.S. has what's called the Supplemental Register for descriptive trademarks. Watch this cartoon to find out what USPTO Supplemental Register is, what are the benefits and disadvantages of using it, and whether or not it makes sense to register trademarks on the Supplemental Register in the United States.
NARRATOR: Warren runs a successful business running a website where people can buy customized bags. Customers can select size, color, material, design, and the number of pockets for their bags. Warren calls this service BUILD YOUR OWN BAG. Most of his sales are in the U.S., so he decides to register his trademarks there.
WARREN: Hello, thank you for coming to see me. I think I’m ready to trademark my brand in the U.S.
TRADEMARK FACTORY: With pleasure. Let’s start with a trademark search to make sure your marks are registrable.
WARREN: Oh, by the way, what do you charge for that?
TRADEMARK FACTORY: Don’t worry. As long as you are genuinely interested in registering your trademark IF it’s registrable, the search is free.
WARREN: OK. Bring it on!
TRADEMARK FACTORY: Well, I have good news and bad news. The good news is that I didn’t find any confusing marks.
WARREN: So no one has registered a similar mark yet? That’s good...
TRADEMARK FACTORY. Yes. The problem is that your trademark may be considered merely descriptive in the US and such marks are only registrable on the Supplemental Register.
WARREN: I don’t understand what you mean.
TRADEMARK FACTORY: No problem. Let me explain. “Merely descriptive” means that your trademark is made up of dictionary words (or their phonetic equivalents) that describe some important features of your product or service.
WARREN: Like how?
TRADEMARK FACTORY: For example, COLOR would be descriptive for printers, SAFE for cars, JUICY for apples, SWEET for ice cream, PERFECTLY CLEAN for dry-cleaning services and BUILD YOUR OWN BAG for the service that allows people to customize their bags. We have actually published a cartoon on how Clearly Descriptive Trademarks are treated in Canada, where they are not registrable. You should watch it.
WARREN: OK, will you do. You also mentioned something about Supplemental Register?
TRADEMARK FACTORY: Yes. In the U.S., the situation is different.
TRADEMARK FACTORY: Descriptive marks are not not registrable on the Principal Register.
WARREN: So they are not registrable in Canada and they are not registrable in the U.S. How is it any different then?
TRADEMARK FACTORY: There are two places where you can register trademarks in the U.S., the Principal Register and the Supplemental Register. The Principal Register is where everyone wants to go, but as I mentioned, descriptive trademarks usually can’t be registered there. HOWEVER! If your descriptive mark is already in use in the U.S., then you can register it on the Supplemental Register.
WARREN: Please refresh my memory what you mean by “use in the U.S.?”
TRADEMARK FACTORY: Again, we have a cartoon. It’s called “What does ‘using a trademark’ mean?” You should watch it. Here’s a quick answer though. Your business is a service of running a website offering custom bags. As long as you offer or advertise your services under BUILD YOUR OWN BAG brand to customers in the United States, you are considered to be using the trademark in the U.S.
WARREN: Clear as day!
WARREN: But… what is this mystical Supplemental Register? Some kind of place for not-quite-trademarks?
TRADEMARK FACTORY: In one sense, the Supplemental Register is like a waiting area. While your mark is registered on the Supplemental Register, no one can register a confusingly similar mark, and if you have been actively using your mark in the U.S. for five years after it was registered on the Supplemental Register, you can claim that your mark has acquired secondary meaning...
WARREN: Secondary meaning?
TRADEMARK FACTORY: The only way to register descriptive marks on the Primary Register is to prove that your trademark has acquired secondary meaning. This happens when the public recognizes a descriptive term as an identifier for a particular source, rather than simply as a description of a feature. In your case, if no one but you uses the brand BUILD YOUR OWN BAG for five years, then you can get it registered on the Principal Register.
WARREN: OK, so what is the downside of this Supplemental Register?
TRADEMARK FACTORY: First of all, you can’t use such registration as proof of ownership of the mark in trademark infringement litigation. This means you still need to prove that you own the mark.
TRADEMARK FACTORY: It also won’t let you stop importation of counterfeit products or imply the right to exclusive use of the mark.
WARREN [angry]: So why bother with registering a mark on this Supplemental Register at all? It sounds worthless!
TRADEMARK FACTORY: Oh, there are many benefits…
WARREN [skeptically]: Oh really?
TRADEMARK FACTORY: You can still legally use the registered trademark symbol, the R in a circle next to your trademark.
WARREN: So most people wouldn’t even know it’s on the Supplemental register!
TRADEMARK FACTORY: Yes. Also no one else will be able to register a confusingly similar mark. In other words, the Trademarks Office will refuse anyone’s later trademark if it’s confusing with your mark, even if it’s registered on the Supplemental Register, and not the Principal Register.
· TRADEMARK FACTORY: Trademarks on the Supplemental Register are not published for third-party opposition, so there is one less thing to worry about during the registration process.
TRADEMARK FACTORY: You can still use this registration to bring a trademark infringement lawsuit in a federal court. It may not be as strong as with the Principal Register registration, but it’s better than nothing.
TRADEMARK FACTORY: And finally, this registration may serve as the basis for a filing in a foreign country.
WARREN: I think I understand now. So what happens after I register my descriptive mark on Supplemental Register? Can I convert it to the Principal Register at some point?
TRADEMARK FACTORY: No. But you can file a new application to the Principal Register once your mark has acquired a secondary meaning. Remember I mentioned “waiting area”. So, usually you have to wait for 5 years before applying to register on the Principal Register.
WARREN: OK. Let’s register BUILD YOUR OWN BAG on the Supplemental Register then. It’s better than nothing, and at least I will be getting some protection.
TRADEMARK FACTORY: You got it!
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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