Seeking trade mark registration in the USA? There’s good news if your trade mark lacks distinctiveness!
It is a core principle of trade marks that an application will be rejected if the mark lacks distinctiveness. That is, if an Examiner deems that the trade mark is one which other traders are likely to wish to use in relation to their own similar goods or services.
In Australia, applications rejected on distinctiveness grounds may be overcome by supporting the application with evidence of use of the brand which shows that the mark has acquired distinctiveness. The United States Patent and Trademarks Office (USPTO) offers an alternative solution.
The USPTO offers two different trademark registers, namely the Principal Register and the Supplemental Register.
What is the difference between the two US trademark registers?
Only marks which possess the requisite level of distinctiveness may be registered on the Principal Register. Examples of marks suitable for the Principal Register include APPLE in relation to mobile phones, or NIKE in relation to shoes. These are trade marks which have no meaning in relation to the goods they are applied to.
Marks that are not inherently distinctive but that otherwise meet the requirements for registration may be registered on the Supplemental Register. These marks may include descriptive marks that are capable of acquiring distinctiveness (that is, over time through use, these marks will come to signify the source of the goods or services), surnames or geographic terms.
It is important to note that generic terms (such as the word “SHIRTS” when used in respect of clothing), are not registrable on either register because no single trader should be afforded exclusive rights in such words.
Benefits and Pitfalls of the Supplemental Register
Seeking registration on the Supplemental Register does have a number of downsides, including that there is no presumption of validity of the trade mark, and it is not possible to rely on a Supplemental Registration to stop importation of counterfeit products.
Despite this, and although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
- The registrant may use the ® symbol to signify that it has registered a trade mark, thereby acting as a deterrent against third parties who may wish to adopt a similar mark;
- The Supplemental Registration will be raised as a barrier to any later US application for a similar mark covering the same or similar goods or services;
- The registrant may bring suit for infringement in federal court (although reputation must still be shown); and
- The Supplemental Registration can be used as the basis for claiming priority in overseas applications, or filing a Madrid application which originates from the USA.
A Good Option
Agreeing to proceed on the Supplemental Register can help reduce the time and money spent attempting to prosecuting descriptive trade marks. Particularly in circumstances where an Applicant may have already commenced use of the trade mark in the USA, registration on the Supplemental Register should not be dismissed.
Whilst the Supplemental Register is another option if an Examiner initially rejects registration, an applicant should always apply for the Principal Register first. Once an Applicant obtains a Supplemental Registration, it is possible to obtain a registration on the Principal Register in the future based on the mark’s acquired distinctiveness.
Contact Geraldine Rimmer geraldine@mbip.com.au for advice and assistance to ensure the best brand protection strategy and outcome for your US brands.