In this ‘Intellectual Property Application Series,’ I’ll be discussing trademark registration on the Supplemental Register of the USPTO. I’ll explain what a trademark is, what the Supplemental Register is, what to know about them before filing any trademark application, and why trademarks are an important tool for protecting your product or service.
What a Trademark is:
A trademark is a type of intellectual property that distinguishes and identifies the source of a good and/or service. Trademarks also assert one’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the marketplace. In short, trademarks are used by companies to distinguish one’s products/services from another.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. Both types of marks can be applied for by filing a U.S. federal trademark application and protected under either the Supplemental Register or Principal Register. The term “trademark” will be used in the general sense in this blog to indicate both trademarks and services marks, unless otherwise indicated.
What the Supplemental Register is:
The Supplemental Register is provided by the USPTO as an alternative to the more formal Principal Register. Some applicants choose to directly file an application on the Supplemental Register. This course of action would generally be at the advice of a practiced trademark attorney, if the mark is obviously not yet eligible for registration on the Principal Register.
The Supplemental Register is generally offered as an alternative option if a trademark is rejected from immediate registration on the Principal Register. A trademark Examiner may initially reject a potential trademark for being too generic, but with time and marketing, the mark may act as a true trademark by becoming an indicator of the source of a company’s goods/services. Registration on the Supplemental Register provides a mark with a certain amount of federal protection while its continued use in commerce gains the mark distinctiveness. Though registration on the Supplemental Register does provide a trademark with some protection, it does not provide the same legal rights as registration on the Principal Register.U.S. federal trademark registrations are identified by class numbers and descriptions.
Trademark classes are a categorization of all the potential goods/services that can be claimed in a trademark and service mark. The class descriptions include 34 goods categories and 11 services categories, making a total of 45 different classes. Identifying trademarks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things.
According to the Lanham Act, which governs trademark law in the U.S., from the moment a mark is used by a business in commerce, it is automatically protected as a common law mark. The first individual to use a mark in commerce is awarded the Common law rights to the mark. This obviously means that rights to a Common Law trademark do not require an official federal or state trademark registration. Common law rights, however, just as federal trademark rights to a trademark, only exist when a mark is in use. Federal registration on either the Supplemental Register or Principal Register provides a public record of the trademark and its use, among other things.
Protection of a mark using common law rights only extends to the geographic area in which the mark is used. This limitation could prevent expansion into other geographic areas. A company in a different geographical area that uses a confusingly similar mark would limit that market. Common law rights may preserve one’s rights to a mark, even over a federally registered trademark, but proving the date of first use may be difficult. Contrastingly, federal registration of a mark provides a verifiable public record of the date the mark was first used in commerce and a copy of the official specimen proving its use.
If an owner of a Common law mark believes that another mark infringes upon their own mark, an application for federal registration, preferably on the USPTO Principal Register, should be filed before an infringement suit is filed. This is because registered trademark holders have the right to recover profits, sue for statutory damages, cover legal costs, and receive triple damages for willful infringement.
Registration on either the Principal or Supplemental Registers allows a mark protection under federal laws. Registration also allows the owner of the mark to use the registration symbol (®) to indicate this protection. This symbol gives constructive notice to the public that the mark is in use. It also discourages others from unintentionally infringing the mark. If infringement is found, the registrant has the right to bring suit in federal court.
Other protections are provided by the USPTO after trademark registration. The office will not accept a competing application for any mark similar to one already on either Register. Additionally, under either Register, a U.S registration can be used as a basis to obtain registration in foreign countries or via the Madrid Protocol.
Protections provided solely under the Principal Register include the presumption of ownership in the entire U.S. This ownership includes the exclusive right to use the mark nationwide in connection with the goods/services listed in the trademark registration. To the extent that a trademark is related to goods, the Principal register grants the right to request U.S. Customs officials to bar importation of infringing trademarked goods.
What to Know About Trademarks Before Filing:
One of the first steps before filing a trademark application on either the Supplemental Register or Principal Register is to investigate the potential mark and confirm if it is unique. For this, a person performs a search of currently used marks. An individual can attempt a search, but a patent attorney, patent agent, or a person who specializes solely in these types of searches can conduct a formal and more thorough search. The United States Patent and Trademark Office (USPTO) even has some advice about hiring a private trademark attorney.
To conduct a formal search, an experienced professional uses specialized tools and databases to compare the potential trademark to the millions of published and registered trademark applications on both the Principal and Supplemental Registers. You can find these applications in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific Secretary of State Office databases. A thorough search would also include a search of common law marks. Even though common law marks, as a matter of course, are not compiled in a useful list, an in depth internet search should provide a good opportunity to determine if a mark is already in use. Afterall, a standard for the protection of a trademark is that the mark must be in use.
Helpful Paralegal’s Note: Even the most in depth search may still miss a similar mark, but finding out if a mark is already registered could save a company from being sued for accidentally infringing another’s mark. This could not only save time and money, but also a company’s reputation.
Trademark Requirements and Use:
Once a mark is decided on, there are specific requirements that must be met for a trademark application filing to be accepted, and for the mark itself to qualify for federal protection. The trademark application filing requirements are defined by the USPTO. To qualify for federal protection via registration with the USPTO, a potential registered mark must be unique to the individual business that is applying for its use. The mark must also either be currently used in commerce or intended to be used.
Whether or not a mark is used in commerce dictates what type of application can be filed with the USPTO. A use-based trademark application is filed with a specimen that shows how the mark is currently being used. If the mark has not been used in commerce, an intent to use (ITU) application can be filed and the specimen requirement is postponed. This filing will secure the filing date as the date of first use and will create a public record. With an ITU application, the mark must be used within 6-months of receiving the USPTO Notice of Allowance. If not, the application will expire and rights may be lost.
What to Know About the Trademark Filing Process:
After an application is filed with the USPTO, the trademark Examiner will review the mark for adherence to the filing regulations. The mark must be distinctive and any specimen must show how the mark is being used in commerce. To see if the mark is distinctive, the Examiner will compare it to the other marks both published and registered on Principal or Supplemental Registers of the USPTO database. If a similar mark is not found, the application will be published on the USPTO Official Gazette. Publication begins a thirty-day Opposition Period. During this time, a third party may contest registration of the mark. To contest registration an opposition to the mark is filed with the Trademark Trial and Appeal Board (TTAB). If no opposition is filed, the mark is allowed for registration on the Principal Register.
If during the Examiner’s review, they find the application does not qualify for registration on the Principal Register, an Office Action will be issued indicating that the trademark is rejected. Rather than barring a potential trademark from registration completely, the Examiner may give the option of amending the application for registration on the Supplemental Register. Supplemental registration is generally offered if a mark is seen as currently too generic for registration on the Principal Register. If over a five-year period, while on the Supplemental Register, a mark “acquires distinctiveness,” registration on the Principal Register can be sought. This requires that an entirely new trademark application be filed seeking registration on the Principal Register.
Post Registration Information and Warning:
A registered trademark must be maintained to keep it enforced. This rule prevents trademarks from being excluded from registration without the adverse mark actually being in current use. To maintain a U.S. trademark registration, you must continue to use the mark in connection with the goods/services identified in the registration, and occasionally file certain documents in the USPTO. One of the main requirements is to submit a specimen proving that the mark is currently in use. The time frame for trademark renewal is five years after registration, then every nine to ten years thereafter.
Between five and six years after registration, a Declaration of Continued Use (or Excusable Non-Use) must be filed. This is also called an Affidavit of Continuing Use, or a Section 8 Affidavit, since its requirements appear in section 8 of the Trademark Act codified at 15 U.S.C. § 1058. The affidavit also requires a specimen of the mark as used in commerce and a fee for each class of goods. By every tenth anniversary thereafter, a Declaration of Continued Use and an Application for Renewal must be filed. The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. § 1059) also requires a fee for each class of goods covered by the registration.
After a mark on the Principal Register has been registered for five years, in addition to the requirement to file a Declaration of Continued Use, the USPTO offers an option Declaration of Incontestability, governed by section 15 of the Trademark Act. The declaration is a signed statement claiming incontestable rights in a trademark and continuous use of the trademark for five years. The Declaration also requires an additional filing fee, per class.
A Declaration of Incontestability is not available to trademarks on registered on the Supplemental Register. If it is believed that a mark has gained distinctiveness after five years on the Supplemental Register, an applicant may file a new trademark application seeking registration on the Principal Register. Alternatively, after five years of registration, a trademark on the Supplemental Register can be maintained by filing a Declaration of Continued Use and an Application for Renewal at the appropriate deadlines mentioned above. Continuing registration on the Supplemental Register will maintain the rights provided by it while the mark continues to gain eligibility for the Principal Register.
After a trademark is in use and/or registered, the market must be monitored for infringement. The trademark owner is expected to enforce their ownership or risk losing rights to the mark. If infringement is suspected, a notice of the trademark rights should be sent to the infringer with the request to cease and desist. This cease and desist notice should, at a minimum, advise the infringer to stop the infringement, or expect further action. While it is not required, having an experienced legal team behind a cease and desist notice can help avoid the potential for the tables to turn. A simple cease and desist notice can be justification for a defamation complaint, claim of extortion, or even material for a counter suit.
The trademark owner is responsible for monitoring and enforcing their rights, but third parties can be enlisted to assist. To ensure that a mark is being monitored correctly, we can assist in forming these trusted relationships and maintaining communication. Additionally, if infringement is found, our team is here to help guide you through the task of trademark enforcement.
A trademark owner should be wary of solicitations from private companies requesting payments to maintain a trademark. Some of these companies simply want to charge for attending to the trademark maintenance fee. Unlike a licensed attorney, these companies are under no obligation to continue to monitor a trademark after the initial maintenance fee is paid. It should also be noted that there are intentionally misleading or malicious entities that send solicitation letters to trademark owners. These entities request payment without the intent of actually maintaining a trademark. In this case, if maintenance fees are not paid, the rights to a trademark will be lost, while the trademark owner believes their rights are still protected. To help identify trademark solicitors, the USPTO has included a list of potentially misleading notices.
Why a Trademark is an Important Tool:
Trademarks are important in their ability to protect both consumers and the businesses that serve them. They provide a business with a way to protect their identity and the goodwill associated with their goods/services. The option to register a trademark on the Supplemental or Principal Register gives businesses the opportunity to protect their mark efficiently. .
The rules that govern trademarks also help businesses compete fairly. To protect against monopolization, the USPTO does not issue trademarks that claim generic terms that are used across an industry. This is another important reason why filing a trademark without an experienced legal team could be fraught with wasted time and money.
Trademark laws also help protect consumers from deceit by counterfeit products or fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. The goodwill of a company indicates to a consumer a level of quality or trust. If a business can’t protect that reputation, it could be the consumer that pays the greater price. A strong trademark backed by a strong legal team gives an owner the confidence to use a mark to identify their goods or services. Consumers then have the opportunity to build trust in that mark and in that company.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP(R) patent attorneys are located in Charleston, SC; Greenville, SC; Knoxville, TN; and Alexandria, VA. Please contact us if you have an interest in filing a trademark application or to discuss other intellectual property matters.