So, you filed a trademark application with the United States Patent and Trademark Office (USPTO) for your new business trademark hoping to obtain a registration of your trademark on the Principal Register. Three months later a trademark examining attorney sends you an Office Action (refusal to register) and suggests that you amend the application to the Supplemental Register.
You then ask, “What is the Supplemental Register?”
If your trademark is considered merely descriptive but the examining attorney still thinks the mark is capable of potentially identifying goods or services with the source, the examining attorney will recommend that you amend the trademark application and seek registration on the Supplemental Register.
Types of Marks Placed on the Supplemental Register
- Descriptive marks that could acquire distinctiveness in commerce in the future
- Geographic terms
- Nondistinctive, nonfunctional trade dress
The Advantages of the Supplemental Register
The Supplemental Register does not afford the same level of protection as the Principal Register, but it still has valuable advantages versus not being registered at all.
The advantages include:
- You may use the notice of federal trademark registration,®.
- You have the right to bring a trademark infringement lawsuit in federal court against a trademark infringer and claims of unfair competition.
- The USPTO examining attorneys may cite the registration against later trademark applications for similar marks for related goods/services since the registration on the Supplemental Registration helps you establish priority.
- A Supplemental Registration will appear in trademark clearance searches.
- It serves as a means of protecting the mark while working to acquire secondary meaning or acquired distinctiveness in commerce.
- The registration may be used as the basis for securing trademark registrations in foreign countries.
Benefits Not Afforded by the Supplemental Register
- There is no presumption of validity, ownership and exclusive rights to us the mark;
- Cannot be used to prevent the importation of infringing or counterfeit products; and
- The mark may never become incontestable
Trademarks that are placed on the Supplemental Register are never published, so third parties may not oppose the registration on the Supplemental Register. If a third party is opposed to the registration of a trademark on the Supplemental Register, the third party will have to file a Petition to Cancel the registration after the certificate of registration on the Supplemental Register has been issued by the USPTO.
After five years, if the owner of the Supplemental Registration thinks the mark has acquired secondary meaning in commerce, the trademark owner can file a new trademark application with the USPTO and try to get the mark registered on the Principal Register.
The owner may need more evidence that the mark has acquired secondary meaning or distinctiveness and overcome the merely descriptive label, such as:
- Documentation that shows the mark has gained notoriety.
- Evidence that the mark has been extensively used in advertising on multiple platforms.
- Declarations from third parties (consumers) that the mark has become well-known and is associated with the goods/services of the trademark owner.
A Supplemental Registration will protect the trademark while the business grows and establishes its brand in commerce. If the business is successful and consumers start to automatically associate the trademark with the business as the source of goods/services, then the owner may be able to obtain a registration on the Principal Register for full protection of the mark.
If you should need assistance with registering a trademark and protecting your company’s brands, take the time to consult with the trademark lawyers at Marks Gray, P.A.