Most know that trademarks exist to aid in distinguishing an owner’s goods or services from other businesses, as well as a source identifier. However, few business owners know that technically, there are 3 forms of trademark ownership: 1. Common law trademark rights under the Lanham Act, or two forms of registration with the USPTO: 2. Principal Register, or 3. The Supplemental Register, and the type of protection they each offer varies greatly. Technically speaking, the best forms of protection, ranked from strongest to weakest, are:
Beginning with the easiest to obtain: common law trademark rights under the Lanham Act. Under 15 U.S.C. § 1127 of the Lanham Act, trademarks are defined as “any word, name, symbol, or device, or any combination thereof” that is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” As a matter of definition, trademarks must both distinguish and serve as an identification of source. As a practical matter, names that are considered “generic” trademarks cannot do so.
No specific action is necessary to create common law trademark rights; instead, these rights may be established solely by use of the mark in commerce, without any registration. While obtaining common law trademark may be quite literally, effortless, enforcement or creation of preemptive rights over any other trademark is extremely difficult. In short, the holder of a common law trademark will only have rights in their geographical area, in their specific type of services/goods. However, these rights are not presumptive; meaning, if you want to protect your common law trademark, you will have to file a lawsuit to do so. Even more important: someone who successfully registers their trademark with the USPTO has superior rights to a common law trademark, meaning they could legally enjoin a common law trademark owner from continuing to use the name.
The Supplemental Register is a step above common law rights, and a step below Principal Register rights. This is where many trademarks that are descriptive or generic wind up. Unfortunately for most businesses, these types of trademarks are the most effective for marketing purposes, yet the USPTO does not deem them as “distinctive enough” for the strongest trademark protection (the Principal Register). In essence, holders of trademarks on the Supplemental Register do not have “presumptive” trademark rights of federal ownership. In other words, if you want to take legal action (sue) someone for using a name too similar to your own, you have the burden of proving that people know of your product/service well enough to associate your trademark with your business in your geographical area. This type of lawsuit is much more difficult to prove (read: much more costly attorney’s fees). However, the Supplemental Register should not be dismissed entirely, and is worth pursuing for many applicants.
Many small business owners, in particular, choose logical names for their trademark that the USPTO considers to be “descriptive” or “generic”, and not unique enough for full trademark protection on the Principal Register. By definition, generic trademarks are descriptive trademarks that cannot distinguish the owner’s goods and services from another company, or designate an origin. For example, I see this most often when an entrepreneur turns a service into a product, and calls it the “___ Shop”. For example, the “Law Shop” or the “Venue Shop”, who sell products only within the specifically named industry, or only a specific type of product or service. These types of names simply do not (and cannot) describe the company with specificity. By definition, a generic trademark is one that describes the class of goods or services itself.
However, many trademark applicants that have difficulty registering with the Principal Register are able to register on the Supplemental Register. By registering on the Supplemental Register, you can use the registered symbol (®) with your name. This puts the world on notice that your trademark is federally registered. In the simplest terms, the Supplemental Register is designed to act as a “holding area” for an applicant’s trademark to acquire distinctiveness, while also, providing certain government protection against users of the same or similar name.
Registering on the Supplemental Register provides far better protection than common law rights, but less than Principal Registration. However, not every proposed name may be registered on the Supplemental Register; most commonly “intent to use” applications.
Pros and cons of the Supplemental Register
|The ability to use the registered sign (®)||No presumption of incontestability|
|Right and ability to collect monetary damages if successful in an infringement suit||No exclusive right to the name|
|Ability to register outside the US (if they have something comparable to the US’ Supplemental Register)||No notice of ownership in an infringement case|
The Principal Register provides the strongest trademark protection available in the United States. Namely, this type of registration provides a legal presumption of your ownership of the mark, and exclusive right to use the mark throughout the United States on or in connection with the goods/services listed in the registration. The principal register is a register that is reserved for the most unique trademarks. In essence, this type of registration means that you are the presumed owner of the trademark in all 50 states. If you are in litigation over the trademark, you have presumed ownership in court, which means less attorney’s fees, typically a shorter proceeding, etc. It is incredibly difficult for any litigation to overcome this presumption, and win in a court battle over a holder of a trademark on the Principal Register.
Principal and Supplemental Register, and Common Law Rights at a glance
|Ability to use ®||Yes||No||No|
|Exclusive right to name||Yes||No||No|
|Notice of ownership in an infringement case||Yes||No||No|
|Ability to register international trademarks||Yes||No*||NA|
|Other applicants can register the same or similar name with the USPTO||No||No||Yes|
Our firm handles trademark applications for a myriad of business owners, and consultations may be booked here.