What is a Trademark, and Why Do I Need One?

A trademark is any word or phrase intended to link a specific good or service with its provider. For example, an Apple computer immediately draws a consumer's thoughts toward the company Apple, and the brand quality associated with them. Not only does “Apple” link a computer (or phone, or watch, etc.) to the brand, but it also distinguishes Apple products from competition in the marketplace, such as Samsung.

In general, trademarks are useful in linking the good or service with the provider of the good or service, and garnering protection for these trademarks is important to prevent others from impinging on the trademark. The focus of this article will be on how to gain this protection and what the protection offers. For more information about trademarks and trade dress in general, see our previous posts, “What are Trademarks?” and “What is Trade Dress?”

Where Can I Register My Trademark?

Trademarks can be registered with several national intellectual property offices, including the United States Patent and Trademark Office (USPTO). In general, a register is a public database maintained by the USPTO that contains information on any registered trademarks. The USPTO maintains two registries: The Principal Register and the Supplemental Register.

The Principal Register has the higher standard of the two and, as such, offers greater protection. To be included in the Principal Register, a mark must be non-generic, non-descriptive, and distinctive in light of the field in which the trademark will exist. A trademark on the Principal Register is assumed to be valid by virtue of its inclusion on this Register.

Protections provided by the Principal Register include:

• The right to use the registered trademark symbol (®).
• The right to sue others for infringement of the trademark (the illicit unlicensed use of the trademark).
• A presumption of validity for a consumer, meaning that when the consumer sees a trademark on a product, they can be assured that it comes with the brand quality associated with the trademark.
• The ability to register the trademark in other countries offering reciprocal rights.
• The ability to prevent others from bringing infringing products into the country by recording the trademark with U.S. Customs and Border Protection.

The USPTO defines the Supplemental Register as “a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become an indicator of source.” The Supplemental Register offers almost the same protections as the Principal Register but to a lesser extent. For example, it would be much harder to prove infringement of a trademark on the Supplemental Register, because the fact that the trademark was not allowed on the Principal Register is an admission that the trademark was not distinctive enough, or was too generic or descriptive, to be placed on the Principal Register.

While the Supplemental Register may not allow one to garner exclusive rights to the trademark, it does prevent others in the same field of goods or services from registering a similar or identical trademark on either the Supplemental Register or the Principal Register. Trademarks on the Principal Register become incontestable after five years, meaning that the grounds upon which the mark's validity may be challenged are significantly limited. In contrast, trademarks on the Supplemental Register will never become incontestable, unless they are moved to the Primary Register. Additionally, in the case of infringement on a trademark on the Supplemental Register, the trademark owner would have to prove acquired distinction much the same way they would to move to the Principal Register, as explored further below.

Similar to the Principal Register, a trademark on the Supplemental Register is allowed to use ® on their products.

A quick side note on ® vs. ™

• The difference between ® and ™ is that ™ can be used by anyone at any time. It can be used by anyone for any product or service, and while intended to indicate that the provider is applying to be on either register, this is not strictly necessary.
• ® can only be used by goods or services that are registered with the USPTO on either the Supplemental or Principal Register.

So why would one want to place a trademark on the Supplemental Register if it may not offer protection from infringement? Over time, a distinction may be created for the trademark, and the trademark owner can then request movement from the Supplemental Register to the Primary Register. One can even look at the Supplemental Register as a placeholder for their trademark while they gain distinction in the market before applying to move to the Principal Register.

What are the Different Types of Trademarks?

From lowest to highest level of distinctiveness, trademarks can be separated into the following groups:

• Generic Trademarks
  • Generic trademarks will not sound like a trademark at all, because they simply describe a good or service. An example of this is “Car Wash.” A car washing company could easily call their business “Car Wash,” but they would not be able to get a federally registered trademark for this name, because it would be unfair to prevent others in the car washing industry from using the same term.
  • For this reason, generic trademarks like this generally do not qualify to be on either the Supplemental Register or the Primary Register.
• Descriptive Trademarks
  • A descriptive trademark is one which simply describes the product. Generally, descriptive trademarks will be placed on the Supplemental Register; however, there are exceptions.

• • For example, Ben & Jerry's is a brand of ice cream that was created by owners Ben Cohen and Jerry Greenfield, so the trademark “Ben & Jerry's” simply describes the product as being created by Ben and Jerry. However, this trademark has developed distinction, and the general population associates the name “Ben & Jerry's” with the ice cream brand, so this trademark has been allowed on the Principal Register.
• Suggestive Trademarks
  • A suggestive trademark is a word or phrase that elicits a reaction in a consumer that associates the qualities of the word or phrase with the good or service being provided.

• • An example of a suggestive trademark is the Ford Taurus. “Ford” by itself is a descriptive trademark that has gained distinction over time, “Taurus” produces imagery of a bull, causing the consumer to associate the car with bulls. The Ford Taurus must be a tough car! This imagery through association makes this a suggestive trademark.
  • While suggestive trademarks are weaker than the forthcoming arbitrary trademarks and fanciful trademarks, they are distinctive and are therefore eligible for the Principal Register.
• Arbitrary Trademarks
  • An arbitrary trademark is a trademark that appears to have nothing to do with the good or service being provided.

• • Returning to the example of Apple from earlier, before Apple entered the computer market, no one would associate the word “Apple” with computers. Now, depending on the context of a conversation, many people will leap to thinking about the computing company before the fruit!
  • This is an example of a strong trademark for entry into the Principal Register (which, of course, it already has).
• Fanciful Trademarks
  • Fanciful trademarks are made-up words. There is no possibility of confusing a fanciful trademark with some other real-world good or service because the word being used did not exist before the trademark was created (foregoing intentional infringement of another company's fanciful trademark).

• • Lego is a great example of a fanciful trademark. The word “Lego” is meaningless (or was, until the company was formed), but now consumers will immediately associate the word “Lego” with the building blocks.
  • Fanciful trademarks are the most distinctive form of trademark and thus are also eligible for the Principal Register.

How Can I Move from the Supplemental Register to the Primary Register?

Trademarks will never “mature” from the Supplemental Register to the Principal Register without outside intervention from the trademark owner. The owner must prove that the trademark has developed distinction since it was placed on the Supplemental Register. This proof can come in a variety of ways, but the two primary methods are:

• Continuous use of a trademark that is on the Supplemental Register for five years; and
• Evidence that the trademark has acquired distinctiveness, such as:
  • Market research that provides evidence that consumers view a trademark as identifying a particular provider of goods or services
  • Consumer surveys
  • Sales figures
  • Advertising expenditures
  • Media coverage

Once this proof is obtained, a trademark owner can file an application with the USPTO including evidence of the trademark's acquired distinctiveness. An Examining Attorney with the USPTO will then determine whether the evidence is enough, and either place the trademark on the Principal Register or reject the application. The trademark owner can then respond to the rejection, providing arguments for why they feel the trademark is distinctive and deserves to be on the Principal Register. This is called prosecution.

How Gallium Law Can Help

Prosecuting a trademark can be a daunting task, especially if one has little experience with trademarks and/or communicating with the USPTO, and that is why we are here to help. At Gallium Law, our IP attorneys regularly handle filing and prosecuting trademark applications and can help you get your trademark registered. You may be a business or an individual; in either case, you deserve to know what IP is available to you, what you are up against, and to have someone by your side. Contact us today by filling out this online form or contacting us at 651-256-9480 to schedule a Free and Confidential Consultation.

*The information provided in this article is not legal advice and should not be relied on as such. This article is meant for informational purposes only and is intended as a starting point in your search for answers to your legal questions.