You have probably heard of trademarks and trademark registrations, but never the Supplemental trademark register. If you have heard of the Supplemental Register, then you have likely received an Office Action from the USPTO alleging your trademark is descriptive, ornamental, functional, or another similar type of refusal.

Descriptive trademarks include marks that describe a characteristic, quality, ingredient, feature, or function of your product or service. While descriptive marks face rejections from the USPTO, there is an option to register a descriptive mark before the USPTO…which is the Supplemental Register.

While most applicants seek a Principal Trademark Registration, a Supplemental Trademark Registration also provides many advantages to not having a registered mark at all. Some of the advantages include:

• a Supplemental Trademark registrant may use the registered trademark symbol ® in connection with their goods and services.
• The registered mark is protected from the registration of confusingly similar trademarks before the USPTO under Section 2(d).
• The trademark owner may bring a lawsuit for infringement before a federal court.
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

With the obvious benefits of registration, there also come some downsides to the Supplemental Register. The biggest issue we notice in practice is the lack of enforcement options available to Supplemental Registrants on the internet. Specifically, social media sites such as Facebook and Instagram do not provide takedown assistance to Supplemental Registration holders. Additionally, while the Supplemental Register provides a registration, it does not entitle the holder to a presumption that the trademark is valid. In other words, if you file a lawsuit in federal court, you must still prove you used the mark in commerce and that the mark has come to identify your business.

It should also be noted a trademark may only be registered on the Supplemental Register if it is currently in use within the United States. Therefore, if you filed your trademark application based on 1(b), or intent to use basis, then your application will not be eligible for registration on the Supplemental Register. However, even if you filed an intent to use an application if your mark is currently being used in commerce in the United States, you are likely eligible to file an Amendment to Allege Use. An Amendment to Allege Use allows you to provide a specimen to the USPTO showing your use of the mark in commerce. Upon acceptance of the Amendment to Allege Use, you will be allowed to register your mark on the Supplemental Register.

In closing, even if you received an office action refusing your trademark application on descriptiveness grounds, you should know there are still options available to seek a trademark registration. While the Supplemental Register is not the ideal registration, it still comes with its benefits, which greatly outweigh any protection your mark may receive without any type of registration.

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