Should I register a trademark on the Supplemental Register?

After applying for a trademark, brand owners often receive Office Actions from the U.S. Patent and Trademark Office (USPTO) stating that their mark is not inherently distinctive and that they can choose to amend their application to the “Supplemental Register”. This frequently occurs to brand owners applying for a trademark with a brand name which has not been screened by a trademark lawyer, which ultimately can lead to a loss of their time and money invested into a trademark application. However, amending an application to the Supplemental Register may be an option for brand owners to not entirely lose their investment.

In the U.S. trademark system, a brand can be registered on either the Principal or Supplemental Register at the USPTO. The Principal Register is preferred for its stronger and more extensive protections, but the Supplemental Register has many benefits. The former is a register for distinctive trademarks, and registration there means the full force of trademark law is behind it. The Supplemental Register holds marks which do not quite meet the “distinctiveness” requirements of the Principal Register, but are also not completely generic and devoid of any value. In a sense, the Supplemental Registration holds marks that aren’t currently distinctive, but may someday grow into something strong enough to be registered on the Principal Register once they can prove “secondary meaning”, that is, to demonstrate that it has acquired distinctiveness in the relevant market segment.

Registration of a brand on the Supplemental Register can help a brand:

  • block registration of brands which are similar to its own
  • gain federal recognition of a brand which is otherwise not capable of being registered. This means the owner can use a Supplemental Registration as the basis to bring a lawsuit for trademark infringement in federal court
  • by allowing it to use the ® symbol next to the brand, which means that the brand is registered with the USPTO
  • gain protection on the Principal Register in the future, which is often the case for “inherently non-distinctive” brand indicators such as personal names, descriptive words, and product shapes. After 5 years of Supplemental Registration, a brand owner can apply for registration of that mark on the Principal Registration by claiming that the brand on the Supplemental Register has become “distinctive” and thus meets the requirements (a Section 2(f) application)

Registration of a brand on the Supplemental Register can form the basis for registering a brand in a non-U.S. country even though it initially does not qualify for registration on the Principal Register. The Supplemental Register was developed in part to help U.S. companies with registering and protecting branding which didn’t qualify for U.S. registration, but which would nonetheless be protected in a foreign country so long as they were registered marks in the U.S.

To compare, registration on the Principal Register:

  • is prima facie evidence of the registrant’s exclusive right to use the mark
  • creates a presumption that the registration is valid
  • serves as constructive notice to potential trademark infringers
  • allows brand owners to access U.S. Customs and Border Protection resources to stop and seize importations which infringe on trademark rights
  • begins the a 5 year clock, after which the registered brand can achieve incontestable status

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