Business people and their advertising agencies usually desire a trademark that directly tells something about their product or service. They want a trademark that does double duty: to both identify source and to tell something about the product. From a marketing point of view, a descriptive trademark is probably the most attractive since it announces the nature of the product or service, but descriptive trademarks are disabling to protection and to eligibility for Amazon Brand Registry.
Today, we discuss the question – what is the difference between a trademark registered on the Principal Register and a trademark registered on the Supplemental Register? What is the relationship between descriptive trademarks and the Supplemental Register? Why is this important?
This distinction is important for Amazon Sellers because descriptive trademarks registered on the Supplemental Register are not eligible for Amazon Brand Registry. Here, we discuss the key distinguishing features of each register.
The U.S. Trademark Act
The U.S. Trademark Act (Lanham Act) provides for two different registers for the registration of trademarks with the United States Patent and Trademark Office (“USPTO”) – the Supplemental Register and the Principal Register.
The Supplemental Register is reserved for trademarks that are descriptive. Descriptive trademarks include: (1) trademarks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods/services; (2) trademarks that are geographically descriptive; and (3) trademarks that are primarily a surname. Examples of descriptive trademarks are:
BRONZE OIL for suntanning oil;
OMEGA SHAKES for nutritional supplements containing Omega 3; and/or
SMITH A/C EXPRESS for fast-cooling air conditioners.
While in the process of selecting a trademark, it is important to know the different types of trademarks so that you select a trademark that is eligible for registration on the Principal Register or else you risk not being eligible for Brand Registry.
The Principal Register
Registration on the Principal Register is reserved for distinctive trademarks, i.e. trademarks that are inherently distinctive (fanciful, arbitrary, or suggestive trademarks). Descriptive trademarks can only be registered on the Principal Register with proof of long, continuous, and substantial use – typically involving evidence of millions of dollars of sales, advertising, and unsolicited media coverage. Only trademarks registered on the Principal Register are eligible for Amazon Brand Registry.
The advantages of federal registration on the Principal Register include:
Evidence of validity and the registrant’s ownership of the trademark;
Evidence of continued use of the trademark;
The ability to sue in federal court;
Statutory remedies for federal trademark infringement claims, including, under certain circumstances: (i) treble damages; and (ii) recovery of attorneys’ fees and costs;
The right to use ® and other notices of federal registration;
After five (5) years the registration may, subject to limited exceptions, become incontestable and be deemed conclusive evidence of the owner’s exclusive rights to use the trademark;
A registration may be recorded with U.S. Customs to stop the importation of infringing, counterfeit, and gray market goods; and
A registration may provide a basis for registering the trademark in foreign countries.
The goal of most trademark practitioners is to secure a registration on the Principal Register due to the strength of the registration and the advantages and benefits that come with a Principal Registration.
The Supplemental Register
The Supplemental Register provides a place to register a trademark that is descriptive but that can potentially identify goods or services. Distinctive trademarks cannot be registered on the Supplemental Register. Registration on the Supplemental Register is limited to trademarks that are (i) in use in commerce (e.g. products are available for sale and have been sold into or from the U.S.); or (ii) based on an issued foreign registration in the country of origin of the applicant.
The Supplemental Register is not available for intent-to-use applications; however, intent-to-use applications can be amended to the Supplemental Register after proof of use is submitted to the USPTO. It is important to note that in this situation, the filing of proof of use (through an amendment to allege use) with the USPTO results in a change of the priority date of the application. That is, the USPTO will consider the filing date of the amendment to allege use to be the effective filing date of the application and That means the USPTO must conduct a new search of USPTO records for potentially conflicting trademarks. Consideration should be given to such a move, as there may be third-party applications that have been filed in the interim between the original filing date and the filing of the amendment to allege use and that will therefore have priority over the amended-to-Supplemental Register application. If this occurs, the newly amended-to Supplemental Register application could lead to a USPTO refusal.
Most often, applications arrive on the Supplemental Register through amendment of an application filed on the Principal Register. This usually occurs after the USPTO refuses registration on the Principal Register because a trademark is descriptive.
To be included on the Supplemental Register, a trademark must be:
Capable of distinguishing the applicant’s goods or services;
Unregistrable on the Principal Register;
Not otherwise unregistrable;
lawfully used in commerce; or
registered in a foreign country where the trademark owner has an office.
Benefits of registration on the Supplemental Register include:
The ability to sue in federal court;
Registration may be cited by trademark examiners against later applications to register similar marks;
Inclusion in trademark search results, which may deter third parties from adopting similar trademarks; and
The right to use ® and other notices of federal registration.
However, supplemental registration does not provide:
Trademark rights beyond common law rights; or
The other advantages provided by registration on the Principal Register.
A chart comparing the Principal and Supplemental Registers follows:
The Registrant may sue in federal court.
The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
The registrant may use the circle R registration symbol: ®.
The registration is protected against registration of a confusingly similar trademark.
The registration qualifies for Amazon Brand Registry.
Registration is constructive notice that the owner of the trademark has the right to use the trademark throughout the entire U.S., even if the trademark is not being used in a specific geographical area. This means that the owner can prevent a person or entity from using the same trademark or a confusingly similar trademark anywhere in the U.S. unless the other trademark was used before the date of first use of the registered trademark.
Evidence that the registered trademark is valid, the registrant owns the trademark and has the exclusive right to use the trademark in commerce.
Evidence that the trademark has been used continuously in commerce since the filing date of the application.
After five years of continuous use in commerce, the trademark becomes incontestable, meaning that the registration of the trademark cannot be attacked on certain grounds, such as prior use or descriptiveness.
In a successful trademark infringement action, the registrant may obtain increased statutory damages.
The registrant may use the power of the U.S. Customs Service to prevent the importation of goods that contain infringing trademarks.
If you wish to avoid landing your trademark on the Supplemental Register and thereby, eliminating your eligibility for Amazon Brand Registry, we suggest the following tips:
Select a distinctive trademark for your brand from the start. Conduct your research, search the names online, and pick a brand name that has the best chances of registering on the Principal Register and Brand Registry.
If you must use descriptive words in your trademark, avoid the entire trademark being descriptive or else you will most likely land on the Supplemental Register.
Descriptive trademarks are difficult to enforce against third party users or sellers using the same descriptive wording.
You may use a distinctive design element with your descriptive trademark which may avoid the Supplemental Register; however keep in mind that Amazon Brand Registry requires brand names to match the exact trademark as filed with the USPTO. If you file a design that includes letters or numbers that are not part of your brand name, those additional letters or numbers will be part of the USPTO designated trademark and will not match your brand name. For example, if your brand is ABC123 and your trademark logo design consists of ABC123 and a crest with the letter A, then the USPTO will designate this trademark as A ABC123, and that will not match your brand ABC123.
If you want to use a surname in your trademark, then consider combining two or more surnames. A singular surname will be descriptive but the combination may avoid a descriptiveness refusal.
Before applying for any trademarks, it is always best to seek the guidance of an attorney experienced in trademark law. We can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your needs.
At MAVEN® IP, we want to be considered your essential partner in creating and implementing an intellectual property strategy that optimizes your intellectual property’s value, efficiency, and protection.