I have a recent trademark that came through on the supplemental register because the USPTO apparently understands the term to be descriptive. When I was filing the Trademark it was my understanding that I would be able to successfully defend my mark even though its not on the primary register.
However now that the mark is live I am finding that no attorney thinks I can successfully defend the mark, it would be a huge waste of money trying to, and that they do not understand how the USPTO approved the mark for even the supplemental register. I immediately called the attorney that handled my case with the USPTO and she assured me that they would not have approved it for the supplemental register if I would not have the ability to defend it.
So my question is what are my options if any? Thanks in advance.
~ Duluth, GA
Yes. Why? The short answer is this: if you want the trademark, you need to create "acquired distinctiveness" by being the only person using the trademark with your goods or services.
Supplemental Register Trademarks need to acquire distinctiveness
Here is the long answer. Trademarks help the public, (for example, your consumer, your client, your future customer, or your prospect) to identify the goods and services that they want to buy or use. They have the right not to be confused and to obtain the level of quality that they associate with the trademark. Ok, so this is not how the law defines it, but, it is the result the law would like to achieve: no confused customers.
So, your supplemental register trademark will only function as a trademark if the public can use that trademark to distinguish your goods or services from that of your competitors. It is your job, as the trademark owner, to make that happen.
Trademark: What evidence support moving from Supplemental to Primary Register
When you agree with the Trademark Examiner and you acquiesce to registration on the Supplemental Register, you are practically admitting that the trademark, by itself, is not sufficient to distinguish your goods and services. You need to spend the time, energy and money so that the purchasing public mentally associates your trademark with your goods or services. There is no magic formula for this, but, here are some typical ways that it can happen, you likely will do all of them to a varying degree:
- A long period of time goes by (usually five years) and your use of the mark is substantially exclusive (that is, no competitor uses the mark).
- You spend significant amounts of time, energy or money on advertising and promotion of the trademark so that the public uses the mark to identify you as the source of the goods or services (and not a description of them).
- You monitor the usage of the trademark and help educate the public and the press that this is a trademark (and not a description).
- You solicit verified statements from your customers recognizing your trademark.
- You conduct surveys, market research and consumer reactions studies.
- You prevent your competitors from using the trademark through demand letters and appropriate legal action.
For more information on these kinds of evidence, see MPEP 1212 et seq.
When you take these actions, you are acquiring distinctiveness, that is, you are building up the secondary meaning of the supplemental register trademark as a source identifier, rather than a description of the good or service. When you take these actions, you will develop evidence that you can present to the Trademark Office to prove that your trademark is distinctive. At that time, the Trademark Office will move your mark to the Primary Register. Just how much you need to do, how difficult it will be, and how long it will take will depend on the specifics of your case.
If you do not want to spend the time, energy or money enforcing your supplemental register trademark to acquire distinctiveness, then, spend your effort to move to a new trademark that is "inherently distinctive" and get it registered on the primary Register.
Why do trademark attorneys have different opinions about the Trademark Supplemental Register?
Finally, I fully expect that trademark attorneys will differ in their opinion of your case. Why? Well, this is a matter of professional judgment. Some may see opportunity that others don't, some may have read cases that others have not, and some may just be more intuitive. Personally, I love hard trademark cases like this. For small business, some creativity can go a long way, because, there is no "perfect" kind of evidence, that is, if you think of creative ways to associate your trademark with your goods in the mind's eye of the public, the Trademark Office will consider it. Think: Guerrilla marketing, quasi-judicial legal action not in the courts, social media, Internet analytic information -- these are all powerful, non-traditional sources of evidence that help show what the public is thinking.