Friday, July 11, 2008

Principal or Supplemental?

A little known fact about the Trademark Registry: there are actually two registers for marks, the Principal and the Supplemental. As the names imply, one is more desirable than the other. But, how do you know which one to use? It's actually quite simple.

The Principal Register is where most marks are registered because most marks are capable of meeting the requirements to be on the Principal Register. One of those key requirments it that the mark be distinctive of the goods or services upon which it is affixed. Put another way, the mark must be inherently distinctive from the outset to be eligible to be on the Principal Register or it must have acquired enough distinctiveness to function as a mark.

What is distinctiveness? 'Distinctiveness' - also known as secondary meaning - is where the public has come to identify the term or design at issue with the products or services of the provider. For marks that are inherently distinctive, this happens automatically because the marks themselves are either suggestive, arbitrary or fanciful. These are known as the Abercrombie factors, named after the case in which they were established.

For marks that are merely descriptive - or simply they immediately convey an idea of the ingredients, qualities or characteristics of the goods or services - they cannot be inherently distinctive because they lack that ability to identify the source of the goods. For these marks, there is another route to registration: The Supplemental Register.

The Supplemental Register is designed for marks that are merely descriptive and that have not otherwise acquired distinctiveness. A registration on the Supplemental Register does not afford all of the benefits associated with the Principal Register, however, it does afford two very important ones: marks on the Supplemental Register can still use the ® symbol and the marks will show up when others search to determine if a mark is available. The biggest detriment to a Supplemental Registration is that you still have to prove that your mark is capable of functioning as a mark should you decide to sue someone else for infringement or other Lanham Act claims.

Once the mark has been used in commerce for at least five years, there is a presumption that it has acquired distinctiveness and thus can be registered on the Principal Register, but only under Section 2(f) of the Lanham Act. This will be noted on the registration so that others can be made aware that it is not inherently distinctive.

On balance, when choosing between a registration albeit on the Supplemental Register and no federal registration, the benefits still usually outweigh the drawbacks.