Benefits Of The Supplemental Trademark Register

One of the reasons your trademark application can be rejected is because the trademark is merely descriptive of the goods or services.  "Merely descriptive" is a legal term of art (meaning good legal argument can sometimes avoid such a characterization), but a trademark is deemed to be merely descriptive when it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services that it functions as a trademark for.

Here are a few principles that help you avoid such a characterization.

• For a determination of whether something is merely descriptive, how you define the goods or services is very important (since this determination is dependent upon the identified goods or services, not in the abstract)
• Combining descriptive terms to form a trademark will not typically help you avoid the descriptiveness problem (again, a good lawyer helps here)
• You can overcome this characterization by showing "secondary meaning", i.e. that the trademark has been used long enough or has been associated with enough advertising that the public perceives the mark as a distinctive trademark

And if you can't avoid it, you can still register your trademark on something called the "Supplemental Register", which has a few benefits, namely:

• You can use the ® symbol for the trademark
• The registration is protected against registration by another of a confusingly similar trademark
• You can bring an action for trademark infringement in federal court (although you probably will not have a strong claim)
• The registration affords easier international registration

So it is not all gloom and doom if your trademark gets rejected for descriptiveness, even though a federal trademark registration on the principal register is a lot more valuable than one on the supplemental register.  Working with a skilled trademark lawyer can often make all the difference in this determination.