Trademark Training Wheels

You apply to register your trademark. The U.S. Trademark Office says your trademark can’t be registered because it’s “merely descriptive” but, rather than reject your application, the Trademark Office offers you an alternative: You can have your trademark registered on the “Supplemental Register.”

Should you take that deal?

Unless you have some very strong arguments for why your trademark isn’t “merely descriptive” you should probably take the deal and register on the Supplemental Register. Here’s what that will get you:

  • You’ll be able to use the ® symbol.
  • It’ll deter other people from using a trademark similar to your trademark.
  • It’ll give the Trademark Office a basis for rejecting applications to register trademarks that are similar to yours.
  • After five years on the Supplemental Register, you’ll be able to get a registration on the Principal Register.

There are some things you don’t get,[2] but the stuff above is a pretty good bundle of rights.

The Supplemental Register is like training wheels for a trademark. If gives a “merely descriptive” trademark[1] a chance to prove itself and someday make it to the Principal Register, the major leagues of trademarks in the United States.

If the Trademark Office makes that choice available to you, you should probably take it.

 

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[1] The U.S. Trademark Office will allow a “merely descriptive” trademark to be registered on the Supplement Register. The generic word for your goods or services (APPLE brand apples) can’t be on the Supplemental Register because the generic word can never ever become a trademark.

[2] Here’s what you do NOT get:

  • You can’t use a registration on the Supplemental Register to prevent infringing goods from being imported into the United States. 15 USC 1124
  • You don’t get a bunch of advantages in legal actions that make it much easier to establish that you have exclusive rights to the trademark. 15 USC 1057(b) and 15 USC 1115.
  • You can’t move forward with your application on the basis of “intent to use.” Only an application based on actual use (or one that has become an application based on use by filing an “amendment to allege use”) can be registered on the Supplemental Register. 15 USC 1051(b)
  • Your registration doesn’t count as though you had used the trademark everywhere in the United States. 15 USC 1057(c)
  • Being on the Supplemental Register doesn’t count as “constructive notice” to everyone that you have rights in the trademark. 15 USC 1072
  • Your trademark doesn’t go through publication and possible oppositions as part of the process of being registered on the Principal Register. 15 USC 1062 and 15 USC 1063.
  • Your time on the Supplemental Register doesn’t count toward the time needed to claim “incontestability.” 15 USC 1065

Initial Interest Confusion

Friendly's“Oh, look, there’s a Friendly’s! Let’s go there. I didn’t know they had those in Florida,” I said to my son as we walked along looking for a place to eat.

Freddy's B&WAs we got closer, I saw that it wasn’t a Friendly’s but a Freddy’s. The font, the color (both use the same shade of red) and the overall shape of the word made me think it was a different restaurant than it actually was.

This is a perfect example of what trademark attorneys call “initial interest confusion.”

My “initial interest” in eating there was the result of my “confusion” about what company was about to make my burger. I realized I was mistaken before I went in, but I was initially confused.

Some courts think “initial interest confusion” is enough harm in certain situations to be considered trademark infringement. It’s easy to see how this feels wrong but it’s hard to nail down.

  • Would this FREDDY’s restaurant have gotten my business if I hadn’t started out thinking it was a FRIENDLY’S?
  • How does this harm Friendly’s?
  • Does it matter whether or not there’s a FRIENDLY’S nearby? (They mostly don’t overlap geographically, but that’s changing. Orlando, Florida has both a FRIENDLY’s and a FREDDY’S.)
  • Assuming Friendly’s trademark rights beat out Freddy’s trademark rights[1], do you think Freddy’s is infringing Friendly’s rights?
  • Should Friendly’s should go after Freddy’s?

These are hard questions with complicated answers, which makes it fun to think about, but not if you’re Friendly’s or Freddy’s.

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[1] Friendly’s first registered FRIENDLY’S in that font for restaurant services in 1990. It had been using that trademark since 1967.

Freddy’s first registered FREDDY’S in their font for restaurant services in 2011 with a date of first use in 2009.