Using the ® Symbol: Trademarks Part 2

Using the ® Symbol: Trademarks Part 2 by Pat Werschulz

We’ve talked about when you can use the ® symbol with your trademark — that you can use it after you have been registered with the United States Patent and Trademark Office. But what most people don’t know is that there are two registries for trademarks that the federal government keeps.

The Principal Register is what most people think about when you say registered trademark, and that grants the ® symbol for any trademark listed on that registry. Those trademarks go through a rigorous examination to make sure that there’s no likelihood of confusion and that they are distinctive marks. They could be fanciful, arbitrary or suggestive.

Sometimes people choose trademarks that are descriptive of their product or service. And when we say they’re descriptive, that means they say exactly what service they provide or the product they sell. I’m going to use my own client for an example.

My client has the trademark The Pita Shack®. Now it is registered on the Supplemental Register. The Pita Shack®, not surprisingly, sells pita. It’s a fast food restaurant that specializes in Middle Eastern food that’s typically served in pita bread, such as falafel or shawarma. When we applied for the mark, the response we received said that the mark was “merely descriptive.”

The good news was that there was no likelihood of confusion with any other trademarks and that we had met all the other requirements for a trademark — except it wasn’t distinctive, it was descriptive. So we amended the application to the Supplemental Register and the mark was accepted for registration.

Many times people choose descriptive marks because they want people to instantly recognize what business they’re in. There are some drawbacks to this; it can be registered, but it will end up on what’s called the Supplemental Register. They still can use the ®, but it doesn’t automatically mean that they own the mark. It’s not prima facie evidence of ownership and use, so it can’t ever be considered incontestable. It’s not distinctive, and if it’s an Intent to Use, it will be rejected. You actually have to be in commerce to be put on the Supplemental Register.

However, if you are already using the trademark when you apply and the examiner decides it’s descriptive and not distinctive, you still can be registered, and you can still use the ®. After a number of years (generally five), you can reapply for the Principal Register by showing “secondary meaning.” That means your trademark has become so closely associated with your goods and services that it now has distinctiveness as a trademark. In other words, you can use the Supplemental Register as a stepping stone on your way to the Principal Register.                            

Being on the Supplemental Register means nobody else out there can apply for a trademark that’s similar, since there would be a likelihood of confusion with your Supplemental Register mark. So it does protect you from other users crawling out of the woodwork. It doesn’t protect you if there are other people already using it, but it does provide protection because it does provide that indicia of ® registration.

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016