The “®”symbol signifies that a trademark has been registered with the USPTO. Registering with the USPTO gives you benefits of national registration,notice and other benefits of that registration. You may not legally use the ® until your mark is registered.
A “TM” or “SM” symbol means that a company issolely claiming common law rights.Common law rightsare limited to the geographic region where you use your mark. Note, however,that “TM” and “SM” can be used right away to claim ownership of some basic common law rightswhile your mark is pending registration.
Types of Trademark Office Actions
Refusal of a descriptive or generic mark refusal will issue if the Examining Attorney feels that the mark describessome aspect of your products or services, or if the term is entirely generic as applied to your products orservices. For example, “hoppy” would be descriptive in relation to beer, whereas “beer” is generic inrelation to that same product. This is a complex issue that may be difficult to overcome, but there are different ways of approaching it.Marks can also be refused as geographically descriptive, which often occurswhen a geographic place name is included as part of the mark (as in the case of “New York Pizza”).In addition, a mark that is seen as primarily a surname is basically treated the same as a descriptive term.A company can overcome an Office Action regarding refusal of descriptive markin threeways..First, you can trademark a descriptive term if you have established “acquired distinctiveness.” The most effectivemeans of establishing acquired distinctiveness is through five years of substantially exclusive use. Second, you can argue that the mark is not actuallydescriptive because, for example, consumers in that industry might understand the term in a different way. Third, you can amend your application to seek registrationon the Supplemental Register. While a registration on the Supplemental Register does not provide all theprotection of a registration on the Principal Register, it has the following advantages:
- You can use the registration symbol ®
- Your mark will be protected against future registrations of a confusingly similar mark;
- You can bring an infringement suit in federal court; and
- The registration can serve as the basis for a filing in a foreign country under international treaties.
We typically recommend amending to the Supplemental Register if the mark is clearly descriptive and you havenot been using it for five (5) years.