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| Home - Industry Article - Jul 05 Issue |
Psyche Out the Trademark Office and Get What You Want
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II. Registration of a Descriptive Mark
A. Principal Register
If one is determined to register a descriptive mark on the Principal Register there are possible ways around the descriptiveness obstacle to registration:
A company might add the company name to its mark to make for a composite mark. Alternatively, consider combining a descriptive word with a suggestive, arbitrary or fanciful word and the mark may qualify for registration (assuming the end result is not confusingly similar to another mark). However, two descriptive terms combined will generally not result in the creation of a suggestive term. Or, consider combining the descriptive terms with a design or logo, or consider filing the descriptive terms in a stylized way. Again, assuming that the word portion of the mark is not confusingly similar to another mark, the mark may qualify for registration.
Keep in mind however, that in all of the above suggestions, the Trademark Office would require that the descriptive or generic wording be disclaimed apart from the mark as a whole, thus resulting in a weaker mark as you are acknowledging that the disclaimed terms are descriptive3. Also keep in mind that this suggestion is not foolproof, and would still have to be searched for conflicts with other similar marks.
B. Supplemental Register
Another approach to registering a descriptive mark would be to request registration on the Supplemental Register rather than the Principal Register. The Supplemental Register allows a number of limited rights: the use of the federal registration symbol Ò, the right to bar confusingly similar marks even on the Principal Register, international rights based on your U.S. registration, and the right to bring suit in federal court. During the time the mark is “registered” on the Supplemental Register, it is technically not considered a trademark; rather it is merely considered “capable” of becoming a trademark. After five years on the Supplemental Register and a showing of use, you may petition to remove the mark to the Principal Register. One drawback is that the registration cannot be used as a basis for the Department of Treasury to stop importations of infringements into the U.S.
III. Conclusion
The more suggestive, fanciful or arbitrary one can make the mark, the stronger the mark and the better chance one will have of obtaining a federal registration and of protecting and policing one’s mark against infringement. A descriptive mark is always a weak mark and because it is weak, is extremely difficult to protect except against the identical mark.
1 While a party may obtain common law trademark protection without registration of a mark, the protection afforded, and the ability to recover damages or attorneys’ fees for infringement is significantly limited without actual registration of the mark.
2 Trademark law allows a company to obtain registration of a mark which would otherwise be seen as descriptive or too confusingly similar to another mark if the registrant can make a showing that the mark has taken on "secondary meaning", or strong association with the company, in the public's eye.
3 The effect of a disclaimer is not to remove from the mark the matter disclaimed, rather it disclaims a claim by registrant that the registration gives an exclusive right in those disclaimed words per se. You claim only the whole composite mark as yours and not the disclaimed portion. The consequence of disclaiming part of a composite mark is that you are conceding that the disclaimed portion is descriptive and, as a result, the disclaimed portion, functioning as part of the composite mark, will be given less weight in a determination of likelihood of confusion. However, for purposes of determining the likelihood of confusion of a mark with a registered composite mark of which portions are disclaimed, the disclaimed matter cannot be ignored, and the disclaimer is irrelevant in such a determination.
Susan Horwitz specializes in advising Internet start-ups and established e-commerce businesses in corporate structuring as well as domain name, trademark and copyright matters. She provides a full range of services like incorporation, employment and confidentiality agreements, licensing agreements, stock option plans, stock purchase agreements, etc. as well as trademark and copyright prosecution. Susan can be reached for article feedback at shorwitz@computerlaw.com.
 
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