A common misconception about trademarks and service marks (collectively, “marks”) is that a business applies for them much like an inventor applies for a patent on an invention.  This is incorrect. The U.S. Patent and Trademark Office (“USPTO”) only registers marks that are already in use in commerce by the applicant for registration.  Although registration creates certain additional rights primarily related to enforcement, the applicant’s rights derive from its own use of the mark (or in some instances, the use by a related entity).

Types of Registration

The USPTO maintains two registers for marks: the Principal Register and the Supplemental Register.  The Principal Register provides better protection than the Supplemental Register and should be the primary choice for an applicant.  A mark will be placed on the Principal Register upon the Trademark Examining Attorney’s finding that there are no confusingly similar marks already registered or having a prior application date and that the mark meets the basic requirements for mark registration, including use in commerce[1] and capability of distinguishing an applicant’s goods or services from those of others,[2] providing that the mark survives publication and an opposition period.  The Supplemental Register is for marks that are deemed by the USPTO to be descriptive, and thus not capable of distinguishing an applicant’s goods or services from those of other entities without benefit of acquired secondary meaning. 

Benefits of Registration

Registration on either register provides a number of benefits, including: (1) the right to use the registered trademark symbol: ®, (2) the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees, (3) a bar to the registration of another confusingly similar mark, and (4) a basis for an international trademark application.

Registration on the Principal Register provides additional benefits to the registrant, including: (1) a statutory presumption that (a) the mark is valid, (b) the registrant is the owner of the mark, and (c) the registrant has the exclusive right to use the registered mark; (2) constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made by a third party after the registration date; (3) nationwide priority based on the filing date; and (4) the registration may become incontestable after five years of continuous use.

Toikka Law Group would be pleased to assist you with your consideration of appropriate trademarks or service marks for your business, and your filing of applications to register such marks.

© 2017 Richard S. Toikka, All rights reserved.


[1] An application to register a mark on the Principal Register may be made under other bases than use in commerce (section 1a), including intent-to-use (section 1b), foreign application (section 44d) and foreign registration (section 44e).  The most common filing bases are those under sections 1a and 1b.  The filing date of a 1b application becomes the priority date (i.e., the effective date of first use in priority disputes with other users of the mark) once a statement of use is filed and accepted.

[2] Courts recognize a spectrum of distinctiveness ranging from fanciful or arbitrary (most distinctive), suggestive, descriptive and generic.  Fanciful, arbitrary or suggestive marks may be registered without proof of secondary meaning.  Generic marks may not be registered.  Descriptive marks may only be registered on the Principal Register upon proof of secondary meaning.  See, e.g., Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976).