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SISUN LAW   ·   79 MADISON AVENUE, FLOOR 2, NEW YORK, NY 10016   ·    347-913-7800   ·   © 2017 SISUN LAW

June 10, 2017

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Is Your Trademark Distinctive Enough? Why Distinctiveness Might Matter When Applying for USPTO Trademark Registration and Amazon’s Brand Registry.

Before even considering launch you should decide whether your mark is distinctive or lacks distinctiveness.  Why?  A stronger mark enables the owner to enforce with more success and to ultimately register on the USPTO’s primary register, the Principal Register, which is one requirement for those interested in building a trustworthy presence on Amazon.  Regardless of whether you're interested in an Amazon Brand Registry presence or a USPTO registration, a strong or distinctive trademark will assist in enforcement via cease and desist, domain name objections (UDRP), and the courts, among others.  

 

USPTO Applications for Distinctive Trademarks

 

Trademark applications in the U.S. ask a number of questions, including whether you are seeking registration on the Principal Register or the Supplemental Register.  The difference generally hinges on how inherently distinctive your mark is.

 

The Supplemental Register is known in trademark circles as the waiting list for the Principal Register.  It is called a waiting list for good reason:  It is the secondary register, the register for marks that are not inherently distinctive, but that could acquire distinctiveness through long term use. 

 

One common USPTO trademark application scenario involves refusal of your trademark on the Principal Register due to your proposed mark being considered merely descriptive, geographically descriptive, primarily merely a surname, and other similar non-inherently-distinctive mark refusals.  

 

You always have the option to respond to the refusal with persuasive evidence and arguments.  Alternatively, assuming the mark is in use, another option could be amendment to the Supplemental Register – registering on the Supplemental Register instead of the Principal.  However, the Supplemental Register may not be for everyone, as it does not have all of the same benefits offered by the Principal Register.

 

What makes a mark inherently distinctive? 

 

The Principal Register is generally reserved for trademarks that are distinctive – inherently distinctive or distinctive through acquired distinctiveness. 

 

Inherently distinctive marks are those that intrinsically identify a particular source.[i]  Distinctive marks are helpful when registering, protecting, enforcing and monetizing marks.  Generally speaking, distinctive marks are considered stronger than non-distinctive marks.  Alternatively, if your mark is a bit descriptive you may still be able to claim acquired distinctiveness and ultimately registration on the Principal Register.  Your mark may acquire distinctiveness (also known as “secondary meaning”) by proving that your mark has become distinctive as applied to your goods or services in commerce and shows that you are the source of the specific goods or services.[ii]  In other words, the goods/services have acquired a special significance so that consumers come to identify a particular owner with the product or service, and not the meaning of the mark (in the case of descriptive marks).[iii]

 

How do you know if your mark is inherently distinctive or can even be capable of acquiring distinctiveness?

 

If you were to imagine a spectrum of distinctive to non-distinctive marks, it might look like this:

 

 

 

Distinctive

 

On the left side, distinctive marks are those that are stronger as consumers do not immediately understand the type of goods/services provided.  The USPTO and courts typically considers marks on the left side of the spectrum to be distinctive and registrable on the Principal Register. 

 

Less Distinctive to Non-Distinctive

 

It’s a bit counterintuitive, but marks on the right side that immediately tell you the nature of the goods/services lack distinctiveness and exclusivity.  Think of the black and white cereal box that says CEREAL.  All should be able to use the term CEREAL.  CEREAL would be on the right-side, the non-distinctive side of the spectrum for cereal.  However, the mark CEREAL for hammers could be considered a distinctive mark for hammers.  (Agreed, it’s not the best example, but you can see how building value in a distinctive mark is more cost effective.) Another example is KODAK®. The term is fanciful because it is a unique word and distinctive because it does not hint at what goods/services the company provides.

 

The spectrum in a little more detail

  • Fanciful:  The marks on the left side, e.g., fanciful marks, are terms that have been invented for the sole purpose of functioning as a trademark; they are either words unknown in the language or are completely out of common usage.[iv]

  • Arbitrary:  Arbitrary marks comprise words that are used in the common language but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.[v]  

  • Suggestive:  Suggestive marks, when applied to the goods or services, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.[vi]

  • Descriptive:  A descriptive mark immediately tells something about the goods or services it is being used for, including a geographic area, and is not considered distinctive.[vii]  Descriptive marks have the potential to acquire distinctiveness.

 

Marks that fall into the descriptive category (not the generic category) are available for registration on the Supplemental Register.  However, it’s recommended you pursue registration on the Principal Register if your mark has acquired distinctiveness (as discussed briefly above). 

 

There are three types of evidence (or a combination thereof) that can be offered to a USPTO trademark examiner to show that the mark has acquired distinctiveness and should be registered on the Principal Register:

 

1. A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application[viii];

2. A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made[ix]; and,

3. Actual evidence of acquired distinctiveness[x].

 

What does the Principal Register offer that the Supplemental Register doesn’t?

 

Benefits of the Principal Register

 

  • The Amazon Brand registry requires a Principal Register registration.

  • Registrant can file for trademark based on intent to use. (Intent to use applicants must have a good faith intention to use the mark in commerce.)

  • Presumptive nationwide rights in the mark.  In other words, protection of your mark for use in interstate commerce across the U.S. 

  • Registrant can record with the United States Customs Services.  This is helpful to prevent the importation of counterfeit goods.

  • After five years of consecutive use, a Principal Register registrant can file a Section 15 affidavit for incontestability.  This aids in preventing certain claims of confusion against marks registered for longer than five years.

What does the Supplemental Register offer?

 

Although not as beneficial as a Principal Register registration, a Supplemental Register registration still has some benefits, such as:

  • The trademark notice ® can be used

  • Examiners may cite Supplemental Register registered marks when examining marks for the Principal Register.

  • Registrant can bring a lawsuit for trademark infringement in Federal Court.

  • Registrant can reapply on the Principal Register via acquired distinctiveness.

As you can see, launching with a distinctive mark has its advantages from USPTO Principal Register registration to Amazon Brand registry benefits. 

 

Feel free to contact us with any questions.

 

 

___________________________________________________________________________

 

[i] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992).

 

[ii] TMEP 1212. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).

 

[iii] TMEP 1212. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).

 

[iv] TMEP 1209.01(a).

 

[v] TMEP 1209.01(a). See, e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).

 

[vi] TMEP 1209.01(a).

 

[vii] TMEP 1209.01(a).

 

[viii] See 37 C.F.R. §2.41(b); TMEP §§1212.04–1212.04(e)

 

[ix] See 37 C.F.R. §2.41(b); TMEP §§1212.05–1212.05(d)

 

[x] See 37 C.F.R. §2.41(a); TMEP §§1212.06–1212.06(e)(iv)

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