October 21, 2014

Weak Trademark? You May Still Make the Practice Squad

by Guest Blogger

The strength of a football player can be categorized in three groups. The strongest players make it on a NFL team's roster as starters or backups. Weaker players are relegated to a team's practice squad. The weakest players do not play in the NFL and pursue careers that require no athletic ability, like trademark law.

The strength of a trademark is not based upon 40 yard dash times or vertical jump height, but upon distinctiveness, or how descriptive the trademark is of the goods and services. We've discussed the spectrum of trademark distinctiveness before. The strongest trademarks (fanciful, arbitrary, and suggestive trademarks) can be registered on what is called the "Principal Register", which is akin to making it onto an NFL roster. Weaker trademarks (words that are descriptive of the goods and services) may be registered on what is called the "Supplemental Register," which is basically like an NFL practice squad. They have some, but not all, of the privileges of being on an NFL roster. The weakest trademarks (words that are the generic name of the goods and services) cannot be registered at all.

If you have the choice, it's clearly better to pick Peyton Manning as the quarterback of your NFL team instead of me. Likewise, it's better to choose a fanciful (made up) word for a trademark than a generic term. Unfortunately, sometimes a business picks a trademark, begins operating, and invests quite a bit of money on signs, advertising, and what-not before realizing that the trademark they picked is not so good. This actually happens quite often, perhaps because picking a name for your business is a tad counter-intuitiveâthe best name for your business is one that has nothing to do with what your business actually does. If you are stuck with a descriptive mark, however, all is not lost. For instance, a lot of people thought Russell Wilson was too short to play quarterback in the NFL, but he won a Super Bowl with the Seattle Seahawks.

A descriptive trademark can "prove itself" and be registered on the Principal Register if it has acquired "secondary meaning," that is, the word has become distinctive because it is known to consumers to indicate that the products or services came from your business specifically. Secondary meaning is a pretty rich subject, but the general rule is that secondary meaning is presumed after five years of continuous and exclusive use. Descriptive trademarks that have not acquired secondary meaning may be registered on the Supplemental Register which, as I mentioned above, is the practice squad of the trademark world. As this chart shows, it's much better to pick a distinctive trademark and register it on the Principal Register.


The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.