Supplemental Register

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Supplemental Register

If you ask most trademark owners about the Supplemental Register, its unlikely that they have even heard of it.  Even so, this register could be very important to those seeking trademark protection.

The United States Patent and Trademark Office (USPTO) maintains both the supplement register and the principal register. Which register your trademark registers to depends on the strength of your trademark.  As such, these two registers provide different levels of protection.

Trademark Supplemental Register

When the Lanham Act was passed, the secondary register was created to supplement the Principal Register. Trademarks listed on this the Supplemental Register are typically those that are descriptive. The descriptive type of trademark doesn’t carry much strength, and that is why applications are so often denied on this basis.

Being listed on the Supplemental Register isn’t something trademark owners typically aim for. This is why most entries to this record occur after a Principal Register application is refused by a USPTO examining trademark attorney.

To be eligible for listing on the supplemental register, a trademark must meet a few requirements:

  • The trademark must be in use or must be based on foreign registration.
  • The trademark must not be distinctive in nature.
  • The trademark must not be generic in nature.

Generic trademarks cannot be listed on either the Principal or Supplemental Register. This is because generic terms typically refer to a type of product rather than a particular product itself. Distinctive trademarks, on the other hand, must always be listed on the Principal Register.

If you file on the principal register and your trademark is found to be descriptive, you’ll need to amend your application for the supplemental register. Failure to do so will result in your registration being refused.  At times, the goal of registering to the Supplemental Register is to give a trademark time to reach acquired distinctiveness. Even descriptive terms, such as the trademarked property ‘American Airlines,’ can acquire the distinctiveness necessary for the Principal Register. Once consumers equate a descriptive term to a specific brand, USPTO examining trademark attorneys will likely view distinctiveness as acquired.

Supplemental vs Principal Register

The Supplemental vs Principal Register debate falls solely upon distinctiveness. When a brand’s trademark is considered unique or has been used long-term and exclusively by the brand, it’s very likely to be placed on the USPTO’s primary register.

Distinctiveness isn’t where these differences end.  The following are some of the most significant areas in which these two records differ:

Presumption of Ownership and Validity

Trademarks listed on the Principal Register have a presumption of validity. They’ve gone through the USPTO trademark review process, opposition period and received registration from the federal government. This provides a variety of benefits throughout the life of the trademark.

The presumption of ownership means the courts will presume your claim of ownership is valid unless proven otherwise. If you’re listed on the Supplemental Register, though, you’ll have to prove that you own the trademark and that consumers associate the trademark with your brand.

Continued Exclusive Use

Registration on the Principal Register also creates the assumption that your trademark has been in continued use exclusively by your brand. This creates a legal hurdle for those who may file a Trademark Cancellation against your registration.

Attaining Incontestable Status

To achieve incontestable status, your trademark must have continued and uninterrupted use for at least five years. Trademarks on the Supplemental Register are not eligible for incontestability. Incontestability is a valuable right because it allows a trademark owner to prevent a defendant from claiming certain defenses in the event of infringement.  Incontestability also prevents certain attacks on the registration.

Application Based on Use

The United States doesn’t require that your trademark be used commercially prior to filing an application. You can file an Intent to Use Trademark if you have a bona fide plan to use the trademark in commerce at a future date. This type of application is not allowed for items listed on the Supplemental Register.

If you file an Intent to Use application and the USPTO examining trademark attorney views your trademark as descriptive, you won’t be able to amend to the Supplemental Register until actual use is proven. This will require the filing of a Allegation of Use.

No Opposition Period

When a trademark application is approved to the Supplemental Register, there is no 30-day opposition period. This means third parties cannot oppose your application based on a likelihood of confusion or other factors. When published on the Principal Register, all potential registrations must survive this period and overcome any oppositions.

Exclusion of Imports

When a trademark is listed on the Principal Register, the owner can request that U.S. Customs and Border Protection (CBP) exclude imports that violate their exclusive rights. This can be a powerful tool in preventing trademark infringement. This option is unavailable for trademarks recorded on the Supplemental Register.

Why File on the Supplemental Register?

In most cases, you should first attempt to file your trademark to the Principal Register. The benefits of doing so are undeniable. If you know your application involves a merely descriptive term, however, you may save time by filing directly for the Supplemental Register.

If a USPTO examining trademark attorney decides your trademark is distinctive, you can still be listed on the Principal Register. If this best-case scenario doesn’t work out, you’ll still receive benefits from registration on the secondary record.

Benefits of Supplemental Register

Although being listed on the Principal Register is ideal in almost every instance, there are still many advantages to the Supplemental Register and definitely make supplemental registration worthwhile.  Benefits of supplemental registration include:

  • It bars competitors from registering confusingly similar trademarks.
  • It allows the owner to utilize the federal trademark symbol (®).
  • It can serve as basis for international trademark registration.
  • It alerts those conducting trademark searches of your rights.
  • It provides trademark protection during the period of acquired distinctiveness.
  • It allows for the registration of otherwise unregistrable terms.
  • It serves as a deterrent to infringement.
  • It allows for monetary damages and injunctive relief in the event of infringement.

Even if you’re early in the process of acquiring distinctiveness, having protection during this time is essential for protecting your rights.

Amend from Principal to Supplemental Register

Fortunately, amending an application from the principal register to the supplemental register is relatively easy.  This is especially true if the trademark is already in use.  In that case, a simple response to an office action making the amendment request is all that is required.

This will send your application back to the USPTO examining trademark attorney for reconsideration. If no additional problems are found, your trademark will register to the Supplemental Register.

Amend from a Supplemental Registration to a Principal Registration

Although amendment from the Principal to the Supplemental Register during trademark prosecution is common, doing so after registration is not allowed.  Likewise, you cannot amend to the principal register after registration.  Once you believe your trademark has achieved acquired distinctiveness, you’ll need to file an entirely new trademark application with the USPTO.

Continued use for at least five years may be accepted as evidence that a brand has gained significance in the eyes of consumers. In some cases, though, the examining attorney could require additional proof. The USPTO may accept all the following as evidentiary examples that acquired distinctiveness has occurred:

  • Extensive marketing of the trademark.
  • Evidence of notoriety.
  • Third-party declarations attesting to brand association.
  • Advertising and sales figures.

This evidence can be used in conjunction with five years of use to qualify for the Principal Register. The trademark need only be in use for this amount of time – the registration date won’t matter.  It is typically a good idea to file a trademark application to the principal register prior to the supplemental registration coming up for renewal.  This will ensure that your trademark remains protected during the registration process for the principal register.  You will also hedge against the possibility that your Principal Register application will be denied. If your principal trademark registration is approved, you can allow the Supplemental Register placement to lapse without paying any further fees.

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For any further questions about the supplemental register, please contact us.

 

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