A very common question that we receive is, “What is the difference between a use-based trademark application and an intent-to-use trademark application?” In fact, we get this question so often that I have decided to write up this blog post highlighting the differences between the two, and some pros and cons for each.
While this seems like a simple question that should have a straightforward answer, the true analysis involved a multi-factor test where each factor must be evaluated separately, and then after each factor-specific analysis is performed, those analyses must be viewed collectively, or “in the totality of the circumstances.” After the collective analysis, a determination as to whether a “likelihood of confusion exists” can be made.
There may be significant changes coming to fair use law. The 2nd Circuit is very influential in the field of copyright law, and this case is no exception. That the Supreme Court has chosen to weigh in on where the lines are drawn with respect to the nature of transformative use suggests that changes are on the way for fair use.
Context: We have an interesting free speech/trademark case this time. Steve Elster attempted to register the phrase “TRUMP TOO SMALL” under IC25 at the USPTO. Apparently, according to Elster, this phrase was taken from the 2016 presidential debate, from a particular exchange between Donald Trump and Marco Rubio. The intention of this phrase was to thus “convey[] that some features of President Trump and his policies are diminutive.”
Context: We have an interesting free speech/trademark case this time. Steve Elster attempted to register the phrase “TRUMP TOO SMALL” under IC25 at the USPTO. Apparently, according to Elster, this phrase was taken from the 2016 presidential debate, from a particular exchange between Donald Trump and Marco Rubio. The intention of this phrase was to thus “convey[] that some features of President Trump and his policies are diminutive.”
The difference between the Principal Register and the Supplemental Register is one of the most initially confusing aspects of Intellectual Property (IP) to non-IP law attorneys. To understand the fundamental differences between both registers, each register is comprised of, and its strengths and shortcomings should be considered prior to choosing a registration alternative.
The Federal Trademark Register in the United States consists of two separate registers, the Principal Register and the Supplemental Register. The principal register grants protection for distinctive marks or marks that have an associated secondary meaning. On the other hand, the Supplemental Register provides protection for non-distinctive marks that have the potential of acquiring distinctiveness. For more information about the spectrum of distinctiveness, visit this article.
There exist three subcategories within the category of a strong mark. These include fanciful or coined marks, arbitrary marks, and suggestive marks. Coined marks are invented terms, arbitrary marks are ones consisting of ordinary words with no relation to the product they are in reference to, and suggestive marks are those which do not describe the product sold and thus require imagination to relate them to the respective product they represent. Marks outside of these categories are considered descriptive or generic, implying that they would make weak marks and hard to protect.
Generic terms are not registrable on either of the Registers because no one should be given exclusive right to use terms that refer to generic goods or services (For example, KLEENEX and BAND-AID. Though these were once trademarks, these brands are victims of genericide.)
A descriptive mark, though, can become trademarkable if it obtains a secondary meaning, also known as “acquired distinctiveness” by becoming an identifier for a good when a company has gained recognition for their goods and services by using a descriptive trademark for over five years. According to the United States Patent and Trademark Office (USPTO), sometimes trademark applications get denied under the Principal Register as they are not deemed distinctive meaning the trademark lacks secondary meaning. The USPTO's Principal Register is limited to marks that have acquired distinctiveness. Trademarks that lack acquired distinctiveness can only be placed on the Supplemental Register.
The Supplemental Register can be considered as an alternative when the Examiner from the Principal Register rejects registration of the trademark under the premise that it is a weak, descriptive mark but that it can acquire distinctiveness on the Supplemental Register. The applicant can then obtain a Supplemental Registration. If the trademark becomes distinctive in the future through acquired distinctiveness, then it is possible to obtain a registration on the Principal Register.
The Supplemental Registry offers limited protection when compared to the Principal Registry in that it includes no right to stop the importation of infringing goods/services and that it does not allow owners to record the filing with the US (United States) customs services to prevent the import of items violating the mark. Although holding certain limitations, the Supplemental Register also has several advantages which include the registrant’s ability to use the registration symbol ®, protection against registration of a similar mark and the ability of bringing a lawsuit for infringement of the mark to federal court.
So, if your mark is denied on the Principal Register, do not get discouraged! Run, do not walk to the Supplemental Registry, and aim for acquired distinctiveness.
When comparing whether a “likelihood of confusion” exists between two trademarks, a multi-factor test is employed. While each jurisdiction has a specific set of factors that get used, the United States Patent and Trademark Office (USPTO) uses the factors set forth in In re E.I. du Pont de Nemours & Co so these “likelihood of confusion” factors are commonly referred to as the “DuPont Factors.”
