The USPTO has to “registers” for trademarks, the principal register and the supplemental register. Before you can understand these registers, you need to understand trademark “distinctiveness,” that is, how much the trademark relates to the goods and services being sold. The more descriptive the trademark is, the weaker and less valuable it is.
Distinctiveness is best described on a spectrum as follows:
- “Generic” marks are merely the common name for the goods or services and cannot receive trademark protection.
- “Descriptive” marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. These marks are difficult to register.
- “Suggestive” marks require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. These marks can be registered, but are considered weaker and less valuable.
- “Arbitrary” are real words that do not suggest or describe a significant ingredient, quality or characteristic of the specific goods or services.
- “Fanciful” marks are marks that have been invented for the sole purpose of functioning as a trademark. Arbitrary and fanciful marks are the strongest and most valuable trademarks.
By way of example, distinctiveness is why “Apple” is a great name for a computer company and a terrible name for apples.
Why would anyone pick a non-distinctive trademark? Because distinctiveness is counter-intuitive. If you are aiming to communicate your goods or services to your target audience through your trademark, you want them to understand what you are selling, right? Nope. Trademarks indicate the source of the goods or services, not the goods or services themselves. So, your trademark should communicate your brand, not your product. All too often, however, a business will select a non-distinctive trademark, start marketing a product, buy signage and business cards, and then call an attorney to try to register the trademark. By then, the investment in the trademark may be too high to develop a new trademark.
So what do you do in this situation? Fortunately, all is not lost. The USPTO has two different trademark registrations, “Principal” registrations and “Supplemental” registrations. The Supplemental Register is the secondary register of trademarks maintained by the USPTO. It is reserved for non-distinctive marks that are capable of acquiring distinctiveness (trademark nerds call this “secondary meaning”), but have not yet done so.
A registration on the Supplemental Register does not provide all the protections of a registration on the Principal Register, but it does grant its owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods. If your trademark later acquires secondary meaning and becomes distinctive, you can always re-file for the Principal Register.
The major drawback of the Supplemental Register is that a trademark on the Supplemental Register is not qualified for the Amazon Brand Registry. So, while it is always better to select a trademark that is distinctive enough to register on the Principal Register from the get-go, with this one exception, it is far from the end of the world if you end up on the Supplemental Register.
