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When you’re building a brand, it’s important to make sure you choose a mark that is not merely descriptive — it must be inherently distinctive or be able to acquire distinctiveness. A common reason the United States Patent & Trademark Office (USPTO) refuses trademark applications is due to lack of acquired distinctiveness or “secondary meaning.” Critically, only marks that are inherently distinctive or those that have acquired distinctiveness can be placed on the Principal Register and have full trademark protection.
“Acquired distinctiveness” is a crucial concept in trademark law. Specifically, a non-distinctive trademark is one that is merely descriptive; deceptively misdescriptive; primarily geographically descriptive, or those that are primarily merely surnames. Non-distinctive trademarks can be registered on the Supplemental Register. This does not offer the full protection and benefits of the Principal Register, but can still be a critical safeguard when it is not possible to register on the Principal Register. However, there are still several circumstances under which they may appear on the Principal Register.
In order to be placed on the Principal Register, a mark must “identify and distinguish” the goods or services with which it is connected. Without being distinctive, a mark may be ineligible for federal trademark protection. This is because a mark that is merely descriptive does not serve to identify and distinguish the source of the goods or services it represents. Descriptive marks are weak and can be very difficult to register.
In contrast, an inherently distinctive trademark is one that lacks words that describe the goods or services connected with it. While it might seem to make sense to choose a term that describes the characteristics of a product for your trademark, it’s best to come up with a name that is fanciful, imaginative, or has no relation to the product — also called an “arbitrary mark.” These types of marks can be registered on the Principal Register without proof of acquired distinctiveness.
Acquired distinctiveness, also referred to as “secondary meaning,” can occur when an unregistered trademark develops distinctiveness. Specifically, a descriptive term used as a trademark may acquire significance over the course of time by the way in which the owner uses it. This can lead to consumers associating the mark with a specific source, manufacturer, or producer.
There are three forms of evidence a trademark owner can submit to the USPTO to show that a trademark has acquired distinctiveness. These include:
Importantly, once a mark has acquired distinctiveness, it is entitled to the benefits and protections afforded to any other marks on the Principal Register.
If your mark lacks inherent or acquired distinctiveness, you may still be able to register it with the USPTO. However, it can only be placed on the Supplemental Register. The USPTO’s Supplemental Register is an alternative available to applicants when the examining attorney rejects a trademark on the grounds that it is a weak or descriptive mark because it is descriptive. If the mark gains acquired distinctiveness, it can later be registered on the Principal Register.
While the Supplemental Register only offers limited trademark protection, there is no presumption of federal ownership when a mark is placed on this register. In addition, an owner cannot record the filing with the US customs services to prevent the importation of items that violate the mark. Nevertheless, the owner of a mark on the Supplemental Register still has the right to use the encircled “R” registration symbol and can bring a lawsuit for infringement in federal court.
There are many rules associated with USPTO trademark registration. It’s best to have a knowledgeable trademark attorney on your side who can guide you through the registration process. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs with a variety of trademark matters, including all aspects of the application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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