Supplemental Register & Descriptive Mark
Supplemental Register & Your Descriptive Mark – The U.S. Patent and Trademark Office (USPTO) is aware that not every business owner or organization is going to seek to employ fanciful marks like “Kleenex.” More likely than not, marks are going to be considered descriptive with words that describe an ingredient, quality, feature, purpose, or characteristic of the product or service. Marks like “Kara’s Cupcakes” or “Make Up Forever” are descriptive marks that will likely first need to apply to the supplemental register before receiving full trademark protections on the principal register.
The principal register is reserved for marks that pass the hurdles of trademark registration in that the marks are distinctive, not likely to cause confusion with another mark in the same class of goods, and survive third-party oppositions. However, in a recent post, we explained that descriptive marks must acquire secondary meaning before they are allowed to receive protection.
Secondary meaning describes when a term has acquired distinctiveness – and has a source-identifying capacity that will allow it to be protectable as a trademark. A prime example of secondary meaning is Christian Louboutin’s red-lacquered soled high heels. Louboutin holds a trademark on the red color in association with high heels, but the color standing alone cannot be trademarked. It’s only through proof of secondary meaning, that the color red has a “source-identifying capacity,” identifying Louboutin as the source that enables it to be registered.
So, what’s a business owner or organization to do in their marks’ naissance while they wait around for secondary meaning to be acquired? Apply to be on the supplemental register. For an application to be approved, the application must prove that the mark is in actual use, rather than merely having an intent to use.
And while a mark on the supplemental register receives no trademark protection, it will help establish seniority, and in five years, a mark on the supplemental registration will be presumed to have acquired secondary meaning.