One unique feature of the U.S. trademark system is that the United States Patent and Trade Mark Office (USPTO) maintains two trademark registers, the Principal Trademark Register (“Principal Register”) and the Supplemental Trademark Register (“Supplemental Register”). This article will outline the features and significance of the Supplemental Register.

What is the Supplemental Register and how does it differ from the Principal Register?

The Supplemental Register is a second trademark register listing non-mark designations that are capable of eventually becoming trademarks and distinguishing an applicant’s goods and services, but do not yet qualify for registration on the Principal Register.

In contrast, the Principal Register is the main register for all trademarks in the US and grants broad rights and protection under US federal law. Unique and distinctive trademarks will generally be eligible for registration on the Principal Register.

When might I register my trademark on the Supplemental Register?

The Supplemental Register may become relevant if your trademark has been rejected for registration on the Principal Register because it:

• is too descriptive and lacks distinctiveness;
• includes a surname only;
• includes a geographic term;
• includes a non-distinctive, non-functional trade dress.

Merely generic terms (for example ‘Shoes’ in respect of footwear) are not registrable on either the Principal or the Supplemental Register.

If your initial application for registration has been rejected by a USPTO examining attorney, you can petition them to allow registration of your mark on the Supplemental Register instead. Alternatively, if you believe that your mark is currently descriptive but may later become distinctive or acquire a secondary meaning through use, you can initially file to register your trademark on the Supplemental Register rather than the default Principal Register.

However, the Supplemental Register is only available for trademarks that are already in use. Accordingly, if your trademark application was filed on an intent to use basis, you must first show that your mark has actually been used in commerce before it can be registered on the Supplemental Register.

What are the advantages of registering a trademark on the Supplemental Register?

Although registration on the Supplemental Register does not provide the comprehensive protection offered by registration on the Principal Register, it still provides some advantages, including:

• allowing registrants to use the registration symbol ® in connection with their trademark. This can deter potential competitors from using your mark;
• protection against subsequent registration of confusingly similar marks;
• allowing registrants to bring suits for infringement of their trademarks in the US Federal Court; and
• providing the basis to gain registration in foreign countries, such as through the Madrid Protocol.

If approved for registration on the Supplemental Register, your mark will also be published in the USPTO’s Trademark Official Gazette (TMOG) on the day it is registered, meaning others will be able to view your registered mark.

Additionally, because Supplemental Register applications are not published for opposition, third parties cannot block your application from being registered.

What are the limitations of registering a trademark on the Supplemental Register?

Unlike the Principal Register, registration on the Supplemental Register does not:

• provide constructive notice of ownership or a presumption of ownership of the trade mark;
• support a later claim of incontestability;
• serve as prima facie evidence of the trademark’s validity and your right to exclusive use of the mark;
• provide US Customs and Border Protection with the ability to stop the importation of infringing or counterfeit goods into the US.

Furthermore, even though third parties cannot block your mark from being registered on the Supplemental Register, they can cancel your mark at any time after its registration. For example, your mark might be cancelled if a third party can show earlier use of a confusingly similar mark, demonstrate cause for superior rights or establish any other available grounds for cancellation.

Can I have my trademark moved from the Supplemental Register to the Principal Register?

If your trademark has been continually used for five years after registration on the Supplemental Register, this can help prove exclusive use of your mark which is a requirement for proving distinctiveness for registration on the Principal Register. However, this alone will not establish distinctiveness and an Examining Attorney will likely require additional evidence to demonstrate that your trademark has acquired distinctiveness rendering it eligible for registration on the Principal Register. This might include evidence of the mark’s fame or notoriety, advertising expenditure, annual turnover, media coverage and declarations from third parties that your mark has become well-known and associated with your goods or services.

Conclusion

The Supplemental Register is a valuable alternative to help protect your brand within the US market in circumstances where your trademark is ineligible for registration on the Principal Register.

If you would like assistance with registering your trademark in the US, please do not hesitate to contact us.

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