The protection that a trademark provides is based upon how strong a mark is in terms of consumers’ being able to understand which goods or services come from whom. Strong marks benefit businesses because consumers associate the particular products and services using the mark as being sourced from a particular vendor. Strong marks also benefit consumers because they receive consistent quality when they’re assured of getting the right product from the right business. The stronger a mark is, the more likely the USPTO will register it.
The strongest marks are typically arbitrary. For example, “Kodak” is an arbitrary word that had nothing to do with cameras when it was adopted. Another example is apple. The apple fruit has nothing to do with computers, so Apple’s trademark is an example of an arbitrary use.
Weak marks are those that contain words descriptive of a quality or feature of the product or service on which they are used. While this may seem counterintuitive, an example will show that descriptive trademarks make them much less distinctive. For instance, if there is an automotive company that sells cars, and its trademark is “Speedy Fast”, this does little or nothing to distinguish those cars from the sports cars of other manufacturers. Those other car manufacturers would also say that their cars are speedy and fast.
Where the strength of a trademark is unclear, it’s then up to the trademark examining attorney at the US Trademark Office to determine whether a proposed trademark is sufficiently strong to be distinctive.
Sometimes the trademark examining attorney determines a mark is not distinctive enough to be registered, or more formally, to be placed on the Principal Register. Rather than rejecting it outright, the examining attorney can recommend that the mark be placed on the Supplemental Register. This allows the mark’s owner to use the ® symbol for an interim period while the mark becomes familiar in the consuming public’s mind as being indicative of the owner’s goods or services. The trademark laws create a presumption that if, after five years of being on the Supplemental Register, the owner continues to be the exclusive user of the mark, then the owner can re-apply for placement on the Principal Register. The second application may be more successful than the first one because there has been time for the mark to gain “secondary meaning”, indicating that over time, the public has come to associate a company’s products or services with the perceived descriptive trademark.
Another benefit of the Supplemental Register is that anyone performing a standard trademark search will find the mark, dissuading that party from choosing a same or similar trademark for their similar goods or services.
Even though supplemental registration is not as legally beneficial as being listed on the Principal Register, being registered on the Supplemental Register does confer limited rights on the owner, and may make it easier to be listed on the Principal Register later if the mark acquires secondary meaning.