Registering Descriptive Trademarks: Supreme As a Case Study

By Jeremy Chen

Many are wondering why it has taken so long for Supreme, a streetwear brand that has been around since 1994, to register its name as a trademark. In a February 2009 interview in Interview Magazine, James Jebbia, the founder of Supreme, acknowledged without going into specifics, that “Supreme” was a difficult name to trademark.

While one can only surmise the details surrounding Jebbia’s particular delay and difficulty in registering his trademark, offered here are some legal insights into why it might typically be difficult to register a mark like “Supreme” for federal trademark protection. In order to do so, let’s delve into some trademark law basics…

The role of a trademark is to garner goodwill for a product, and to help consumers identify the product, its quality, and its source. In other words, a trademark is the reputation of the product. A main concern of trademark law is that a mark may be used to confuse consumers about a particular product’s reputation.

To limit possible confusion in the marketplace, the U.S. Patent and Trademark Office (USPTO) reviews each application by analyzing the nature of the mark and the category it fits into. Categorization is important because some types of marks are more prone to confusion. One of the main difficulties “Supreme” probably faced was its categorization as a descriptive mark, which carries extra legal burdens for registration.

Federal trademark law generally groups marks into four categories with each category assigned a different level of protection under federal law. The four categories of marks are:

• Generic,
• Descriptive,
• Suggestive, and
• Arbitrary/fanciful.

A generic mark receives no protection and cannot be registered because such marks are so broad in nature that they cannot be used to indicate a source of the product. An example of a generic mark would be “Juice” for a company that sells juices.

Suggestive marks receive greater protection because they suggest the characteristics of the goods, and require some imagination by the consumer to connect the mark with the product. A well-known example would be International Business Machines (IBM) as a suggestive mark for computers.

Arbitrary marks are the strongest and receive the most protection because the only information conveyed is the source of the product. An example would be Apple for computers because apples have nothing to do with computers, and its product’s reputation is primarily the result of its marketing efforts.

Descriptive marks (what the “Supreme” mark is) are generally adjectives that describe the product or its functions, and only receive slightly more protection than generic marks. In order to trademark a descriptive mark, a company must show that the mark has acquired what is called a “secondary meaning” in the marketplace.

The reason for the extra burden to prove secondary meaning for descriptive marks is because such marks are so broadly applicable that anyone could use it, making confusion more likely. In this case, “supreme” as an adjective could describe virtually any product, and a trademark applicant would need to show that the mark has developed a secondary meaning.

Secondary meaning on the market means that a descriptive mark has taken on a life of its own and serves as a unique identifier for a specific source of goods. After more than 20 years of use, Supreme could argue that its mark gained a secondary meaning to include streetwear and accessories of a certain quality.

There are two ways to prove secondary meaning. The first way is to use the descriptive mark continuously for five years and register that mark on the USPTO’s Supplemental Register. The Supplemental Register is where weaker marks, that do not qualify for the Principal Register (usually for arbitrary and suggestive marks) must be registered. Registration on the Supplemental Register is not an automatic approval by the USPTO; instead, it is only used to prove five years of continuous use. Once the five-year period on the Supplemental Register has passed, the mark can then be re-registered on the Principal Register.

The second way to show secondary meaning is by conducting consumer surveys. Most legal authorities agree that survey evidence is the most direct way of establishing secondary meaning. This method, however, involves additional costs to conduct surveys, and may not necessarily yield the survey results a brand needs to show secondary meaning.

Other delays can also hold up an application for federal trademark registration. For example, if the USPTO refuses the mark, the applicant must file a response and appeal the decision. If the applicant wins on appeal, the trademark registration must be published in the Official Gazette (a USPTO weekly publication) for 30 days for any party to oppose the registration. If there is opposition, then a proceeding is held before the Trademark Trial and Appeal Board.

In closing, not all marks are the same and certain marks receive different scrutiny based on its categorization. An applicant for a descriptive mark like “Supreme” should be prepared to put in extra work to overcome the additional difficulty and delay that usually accompanies federal registration of such marks.

Disclaimer. The information in this article is not legal advice, and is provided only for informational purposes. This article is only a general discussion, and does not include all relevant information regarding the topics and issues addressed within it.