Listen in to NameChangers episode #4 to hear about the good, the bad, and the ugly of descriptive trademarking and the difference between The Principal Register and the Supplemental Register.
Episode #4 Transcription:
Quick note, this is part two of a five-part series. So, if you haven’t heard our first episode of generic trademark, go check it out now.
So we’ve thrown out our generic names and are ready to go to the next level. Well, our minimalist cereal company from our last episode found out they can’t trademark just “cereal” so they’ve decided to name their company Crunchy and Sweet Cereals. Well, if this is the name they must have, they better be prepared for potential legal battles and years of proving that their name should be protected. However, that shouldn’t stop them, because it might actually be the best choice for their business.
I’m James Doherty and this is Name Changers.
Our second level of strength of trademarks is known as the descriptive trademark here to tell us more is our good friend, trademark attorney Christopher Roden.
Christopher Roden: So a descriptive mark is something that has the capability of functioning as the origin of a set of goods or the set of services, but for the most part what the mark does is it describes what the services are, describes a significant function, aspect, ingredient, or so on of the service.
James: So the new cereal company, Crunchy and Sweet Cereals, falls under this category. Some other possible examples, a lollipop company named Sweet Lollipops, a candle company named Sweet Smell Candles. I’m on sweet things tonight. Okay, so where does that leave the company? Is it possible to trademark this name unlike a generic trademark?
Roden: One of the nice things about descriptive marks that I don’t think a whole lot of people realize is that you can get a registration even if it’s just descriptive, even if you do not have that acquired distinctiveness. The issue then becomes that you’re not on the principal register you’re on what’s called the Supplemental Register.
James: Let’s talk registers. The Principal Register is the Big Daddy of registers where your company name is listed. If you have a unique name. This includes made up words like Nike, Exxon, or unrelated words like Apple Computers, we’ll cover these in later episodes.
If you’re on that list, you have a lot of protections for your name. You have presumptions of validity, ownership, and exclusive rights to use the name and if someone tries to go against you in court to remove your trademark, it’s going to be difficult.
Roden: So what you end up filing a trademark or filing trademark application with the USPTO and a person called an examining attorney, someone who is licensed to practice law in whatever state has been hired by the federal government to look over your trademark application to see if it meets all of the statutory measures. If the mark ends up being descriptive based on that examining attorney’s determination, they’ll issue what’s called an office action. And that office action will say “hey your mark is merely descriptive” pursuant to whatever part of the trademark act so they’ll issue that refusal to register, pursuant to section 2E1, but what they will say is you can either argue against me and tell me why this mark isn’t descriptive or you can mend your application from the principal register to the supplemental register. And that’s generally just more of an administrative procedural process.
James: The Supplemental Register is a step-down. It’s kinda like your grocery store’s generic brand but it still has its benefits. You can still use the magic symbol, the small circle with a capital R inside, the registered trademark symbol. You have protection against someone trying to register a mark that is confusingly similar and you can bring suit onto someone trying to infringe your name. Although it might be a little more difficult as opposed to if your name was on the principal register now if you get on the supplemental register not all hope is lost to get on the Principal Register. Here’s a great example from Chris.
Roden: So a good example of this would be like Best Buy’s Geek Squad. Now, when you think Geek Squad right now, you think the guys over at Best Buy who do tech support. That’s why it’s capable of functioning as a trademark. But, then again, you also have to think that tech support generally could be described as a group of, I guess, “geeks” or a “squad of geeks”, if you will. So if you’ve got a descriptive mark one of the big things that you need to be able to show to the USPTO if you want to get a registration for that mark is that the mark has what’s called “acquired distinctiveness”. What that means, in layman’s terms, is that consumers of the goods or services have associated that brand name, that trademark, with the source of the goods so going back to our Best Buy example, Best Buy has spent millions of dollars in advertising on making sure that everybody knows that The Geek Squad is part of Best Buy. Best Buy has done thousands of consumer surveys basically going out and asking random people, “Hey do you associate this Geek Squad trademark with Best Buy?” They’re done obviously more professionally than that. Best Buy has spent so much money making sure that consumers recognize the Geek Squad mark with their particular goods or services it has that required distinctiveness it has that association in the consumer’s mind with the provider of the services.
James: So maybe we don’t all have millions of dollars in our marketing budgets, but that doesn’t mean the descriptive mark is a bad idea. Descriptive marks are actually good if you have a small marketing budget. If you go with a made up or unrelated term you were going to need to spend a lot on marketing to educate the consumer. They have to connect that name to your product with a descriptive mark that works already done for you.
Also, being able to use that registered trademark symbol will deter most companies from trying to use your name as most people want a name that’s easy and doesn’t involve messy legal battles. The downside though you won’t exactly catch the eye of consumers with your cool, unique name. Also that money you’re saving on marketing you may end up spending on things like cease-and-desist letters, litigations, countless trademark applications, and lawyer fees. It’s definitely a trade-off. Now, my favorite way to learn things are real world examples. So here’s a great one from Chris.
Chris: One of the first trademarks that I registered, and I can talk about this because trademark registration, this is all public information. You’ll actually see my name if you look at this. The client what she does is she’s a graphic designer. She creates printable stationary, so, you know, cut it out and do all these sort of things and there’s all sorts of party supplies. It’s a really cool business. When we were registering her trademark we ended up having to amend to the Supplemental Register. We tried to make a showing of acquired distinctiveness, but she was, it’s a small business and it’s not necessarily one of these multimillion-dollar companies that’s going to be able to clearly demonstrate acquired distinctiveness, or used interchangeably in the USPTO “secondary meaning”, basically this idea that consumers have recognized the brand. She hadn’t been in business long enough. So one of the big ways that you can show that you have acquired distinctiveness is you’ve been using the mark for five years now, we’re able to get her a registration on the Supplemental Register, which is a good thing, because you can use that supplemental registration as evidence that you have that acquired distinctiveness. So it’s not ultimately a hindrance to have a descriptive mark but in terms of attracting consumers it’s not necessarily advisable.
James: But there is another way to appeal to get your name on the Principal Register
Roden: Another way that you could do it, and this doesn’t necessarily apply to Geek Squad, is you could demonstrate that mark is suggestive which we’ll be talking about in a later episode. .
James: I love it when guests do the work for me.
Name Changers is made in association with NameStormers, a naming agency in Austin, Texas. You can find out more about them at namestormers.com. Special thanks to Christopher Roden and Megan Dzialo. If you like what you hear, please rate and review us on Apple Podcasts, it helps people find us. We’ll see you next week.