The underlying philosophy of trademark law is to prevent consumer confusion in the marketplace by ensuring that the marks identify the source of goods or services. Consumers can therefore rely on a particular company’s goodwill, including expectations regarding standards of product quality and customer service. Trademarks rights are derived through use in commerce-not through registration-although federal registration provides certain important legal advantages. The owner of a valid trademark can prevent others from using that mark or a confusingly similar one for the same or related goods or services in commerce.
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Principal and Supplemental Registers
In order for a trademark or servicemark to be protectable, it must be capable of serving this source identification function. In other words, it must be distinctive of the goods or services in question rather than descriptive of them. Federal trademarks are registered on either the Principal Register or the Supplemental Register. The Principal Register is reserved for marks that are either inherently distinctive or have acquired distinctiveness. The Supplemental Register is for marks that are not distinctive but are capable of acquiring distinctiveness through use in commerce. Although in theory marks can be applied for on the Supplemental Register, applicants always request registration on the Principal Register. If the examining Trademark Attorney rejects the application for lack of distinctiveness, the applicant may request to register the mark on the Supplemental Register. This provides certain limited rights for the applicant but does not provide the owner with the right to prevent others from using the mark in commerce.
Some marks are considered to be inherently distinctive. These may be immediately added to the Principal Register (assuming they meet all of the other legal qualifications). Others are so highly descriptive that they are incapable under any circumstances to function as a trademark, and thus cannot be added to either register. These are known as generic marks. And some marks fall into the merely descriptive category. These are marks that are capable of serving as source identification in the future, but are not yet distinctive enough to qualify.
Merely descriptive marks can be added to the Principal Register only after the owner can demonstrate acquired distinctiveness (sometimes also referred to as secondary meaning) – that is, even given the descriptive nature of the mark in question, it has achieved sufficient notoriety for consumers to associate the mark with source. To prove that your mark has acquired distinctiveness, you must show “substantially exclusive and continuous use in commerce.” The time period for achieving this is typically five (5) years; however, the actual time period required can be more or less depending on the specific circumstances, such as the nature of advertising campaigns and sales. A trademark examiner must be reasonably convinced that consumers associate your mark with the source of goods or services rather than the description thereof.