The Supplemental Trademark Register does not enjoy all the same benefits as the Principal Trademark Register but is still worthwhile for trademark owners.
The Principal Register at the United States Patent and Trademark Office (USPTO) is where trademark owners want their trademarks to be registered. However, in some cases that is not possible. That is where the Supplemental Register can be beneficial to trademark owners.
Primary Differences Between the Two Registers
The primary difference between marks that can be registered on the Supplemental Register and not the Principal Register is the mark is not distinctive. Some marks that are not distinctive can acquire distinctiveness, however, if the trademark owner cannot prove acquired distinctiveness, they will likely need to amend their trademark application for the supplemental register. Learn more about the differences in our previous blog post.
The chart above illustrates the main differences between the two registers
Benefits of the Supplemental Register
Marks registered on the Supplemental Register do not enjoy all the same rights and protections as marks on the Principal Register. For example, they cannot become incontestable, they are afforded a more narrow scope in likelihood of confusion cases, and they are considered non-distinctive. However, there are several benefits to being on the Supplemental Register, which make it a worthwhile investment.
Use of the Registration Symbol
One of the most obvious benefits of a trademark being registered on the Supplemental Register is that it can use the trademark registration symbol, i.e. ®. Even if consumers do not know what the ® symbol means, many consumers view it as a stamp of legitimacy. In addition, if a competitor saw the registration symbol, they would be put on notice not to use the same or a confusingly similar trademark.
Block Registration of any Subsequent Filers
Another benefit to a mark gaining registration on the Supplemental Register is that it will stand as a roadblock for any confusingly similar trademark filed after it. For example, if a company uses a non-distinctive mark, such as a last name, then a subsequent company trying to register a mark with the same last name in a related field will likely be denied. The owner of the prior registered mark gets to prevent potential future competitors from getting on the register and maybe they will change their name altogether.
Acquiring Distinctiveness
The main reason marks end up on the Supplemental Register and not the Principal Register is that they are not distinctive. In order for a mark to be distinctive, it needs to be fanciful (i.e. a made up word), arbitrary or suggestive. In addition, geographic locations or surnames are not inherently distinctive. For marks that are not inherently distinctive, a trademark owner must show their mark has acquired distinctiveness over time.
The best way to show acquired distinctiveness is through continuous and exclusive use. Generally, five years of continuous and exclusive use will be enough to show a mark has acquired distinctiveness.
A mark on the Supplemental Register for five years is great evidence that the trademark owner has continuously and exclusively used the mark in commerce for five years. The Supplemental Register is therefore a good place for a young company to register a trademark that is not inherently distinctive to show their continued and exclusive use over the course of five years.
Marks on the Supplemental Register Cannot be Moved to the Principal Register
It would be nice if a mark registered on the Supplemental Register for a period of five years could be amended to the Principal Register with a simple USPTO filing and fee. However, this is not possible because marks on the Supplemental Register are not Published for Opposition. Under 15 U.S.C. §1062(a) (the Lanham Act), a mark must be Published for Opposition before it can be registered on the Principal Register.
Section 1609.09 of the Trademark Manual of Examining Procedure (TMEP)
In order for the owner of a mark on the Supplemental Register to get a registration for the mark on the Principal register, they will need to file a new trademark application. As discussed above, the Supplemental Register is a good way to show a mark has acquired distinctiveness. The Supplemental Register is often a stepping stone for a non-distinctive mark to acquire distinctiveness and end up on the Principal Register in the end.
Do you have any questions about the Supplemental Register? Feel free to Contact Us or leave a comment below.