If you have applied for a trademark registration with the United States Patent and Trademark Office (USPTO), you may have encountered the term “supplemental register”. But what does that even mean? And is it worth having your trademark on it? In this blog post, we will explain what the supplemental register is, how it differs from the principal register, and what advantages and disadvantages it offers to trademark owners.
The Spectrum of Trademark Distinctiveness
Before we dive into the supplemental register, let’s briefly review the concept of trademark distinctiveness. Trademark distinctiveness is the degree to which a mark can identify the source of the goods or services and distinguish them from those of others. Trademark distinctiveness is important because it determines whether a mark can be registered on the principal register, the supplemental register, or not at all.
The spectrum of trademark distinctiveness ranges from generic to fanciful, with descriptive, geographic, and suggestive marks in between. Generic marks are common words that describe the category of the goods or services, such as “Apple” for computers. Descriptive marks are words that describe a quality, feature, function, or purpose of the goods or services, such as “Smooth” for ice cream. Geographic marks are words that indicate the origin or location of the goods or services, such as “Florida” for oranges. Suggestive marks are words that imply or hint at the nature of the goods or services, such as “Netflix” for streaming services. Fanciful marks are words that are invented or have no meaning, such as “Xerox” for copiers.
Generic marks are not distinctive and cannot function as trademarks. Descriptive and geographic marks are not inherently distinctive, but may acquire distinctiveness through use in commerce. Suggestive and fanciful marks are inherently distinctive and can function as trademarks without any proof of use.
For more information on the spectrum of trademark distinctiveness, please refer to our previous blog post.
What is the Supplemental Register?
The supplemental register is a secondary register of trademarks maintained by the USPTO. The supplemental register is designed for marks that are not distinctive enough to qualify for the principal register but may still function as trademarks if they have some degree of recognition or reputation in the market.
The supplemental register is mainly for marks that are descriptive, geographic, or otherwise not distinctive of the goods or services listed in the trademark application. For example, a mark that describes the quality, feature, function, or purpose of the goods or services, such as “Smooth” for ice cream, may be placed on the supplemental register.
To be listed on the supplemental register, a trademark must meet the following requirements:
- Be capable of distinguishing the goods or services of the applicant from those of others. This means that the mark must not be generic, deceptive, or immoral.
- Be in use in commerce. This means that the mark must be actually used on or in connection with the goods or services in interstate or foreign commerce.
How Does the Supplemental Register Differ from the Principal Register?
The principal register is the primary register of trademarks maintained by the USPTO. It is established by Subchapter I of the Lanham Act. The principal register offers the most complete level of trademark protection under U.S. law. Some of the benefits of the principal register include:
- Nationwide legal protection. This means that the owner of the mark has the exclusive right to use the mark in connection with the goods or services identified in the registration throughout the United States. The owner can also prevent others from using confusingly similar marks that are likely to cause consumer confusion, mistake, or deception.
- Presumption of validity, ownership, and distinctiveness. This means that the registration serves as prima facie evidence of the validity of the mark, the ownership of the mark by the registrant, and the distinctiveness of the mark. These presumptions can be very helpful in enforcing the mark against infringers or defending the mark against challenges.
- Constructive notice of ownership. This means that the registration serves as constructive notice to the public of the registrant’s claim of ownership of the mark. This eliminates the defense of good faith or innocent use by infringers who claim that they did not know of the existence of the mark.
- Right to use the ® symbol. This means that the owner of the mark can use the federal registration symbol ® next to the mark to indicate that the mark is registered on the principal register. This symbol can enhance the reputation and value of the mark and deter potential infringers.
- Right to sue in federal court. This means that the owner of the mark can bring an action for trademark infringement, unfair competition, or dilution in federal court and seek remedies such as injunctions, damages, profits, attorney’s fees, and treble damages.
- Right to record the registration with the U.S. Customs and Border Protection. This means that the owner of the mark can record the registration with the U.S. Customs and Border Protection to prevent the importation of counterfeit or infringing goods that bear the mark or a similar mark.
- Right to apply for international protection. This means that the owner of the mark can use the registration as a basis to apply for trademark protection in other countries that are members of the Madrid Protocol or other international treaties.
To be listed on the principal register, a trademark must meet the following requirements:
- Be distinctive or have acquired distinctiveness. This means that the mark must be capable of identifying the source of the goods or services and distinguishing them from those of others. Distinctiveness can be inherent (for example, if the mark is fanciful, arbitrary, or suggestive) or acquired through use in commerce (for example, if the mark has become well-known or famous).
- It must go through a 30-day opposition period following publication. This means that the mark must be published in the Official Gazette of the USPTO and any third party can file an opposition to challenge the registration within 30 days. If no opposition is filed or the opposition is dismissed, the mark will proceed to registration.
- It must meet all other requirements for registration. This means that the mark must comply with the rules and regulations of the USPTO, such as the use of proper specimens, disclaimers, and declarations.
What are the Advantages and Disadvantages of the Supplemental Register?
The supplemental register provides some protection to the holder of the mark, but not as much as the principal register. Some of the advantages and disadvantages of the supplemental register are:
- The mark can be registered faster and easier than on the principal register. This is because the mark does not have to go through the opposition period or meet the distinctiveness requirement.
- The mark can use the ® symbol to indicate federal registration. This can help the mark gain recognition and reputation in the market and discourage potential infringers.
- The mark can be protected against conflicting marks in later-filed USPTO applications. This means that the USPTO will refuse to register any mark that is identical or confusingly similar to the mark on the supplemental register for the same or related goods or services.
- After five years of continuous and exclusive use in commerce, the mark can be refiled based on that use to apply on the principal register. This means that the mark can acquire distinctiveness through use and enjoy the full benefits of the principal register.
- The mark does not receive the nationwide legal protection of the principal register. This means that the owner of the mark cannot prevent others from using the mark or a similar mark in different geographic areas where the mark is not used or known.
- There is no presumption of validity, ownership, and distinctiveness like an owner gets with the principal register. This means that the owner of the mark has to prove these elements in court if the mark is challenged or infringed.
- The mark does not receive the constructive notice of ownership. Meaning the owner of the mark cannot rely on the registration to stop infringers who claim that they were unaware of the mark.
- The owner of the mark cannot sue in federal court for trademark infringement, unfair competition, or dilution. This means that the owner has to rely on state law or common law to enforce the mark against infringers.
- The mark’s registration cannot be recorded with the U.S. Customs and Border Protection. This means that the owner of the mark cannot prevent the importation of counterfeit or infringing goods that bear the mark or a similar mark.
- The mark cannot be used to apply for international protection based on the registration. This means that the owner of the mark has to file separate applications in each country where the mark is desired to be protected.
Our Opinion on the Supplemental Register
At The Trademark Place, we believe that, when possible, it is always better to use a more unique name that can be fully protected on the principal register. A distinctive mark can help you stand out from your competitors, create a strong brand identity, and enjoy the full benefits of trademark registration.
However, if your trademark name is descriptive, it’s still better to get it registered on the supplemental register than to not protect it at all. A descriptive mark can still function as a trademark if it has some recognition or reputation in the market, but the key here is that it needs to already be in use in the market. A supplemental registration can provide some protection to your mark and help you prevent others from registering similar marks. While it cannot simply be transferred from the supplemental to the principal register, it can also give you the opportunity to reapply for your mark on the principal register after five years of use, if you can prove that your mark has acquired distinctiveness.
Therefore, we recommend that you consult with a trademark attorney to determine the best strategy for your mark. A trademark attorney can help you assess the distinctiveness of your mark, conduct a trademark search, file a trademark application, and handle any issues that may arise during the registration process.
If you are interested in registering your trademark, please contact us today for a free consultation. We are a trademark law firm that specializes in helping clients obtain and protect their trademarks. We have the experience and knowledge to help you secure your trademark rights. Let us help you make the most of your trademark.