The USPTO Supplemental Trademark Register: Advantages And Disadvantages To Amending The Supplemental Register

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The United States Patent and Trademark Office (USPTO) has two sections of the Federal Trademark Register – the principal and supplemental registers.  The principal register is where the majority of trademarks are registered. The supplemental register is generally reserved for non-distinctive marks that are capable of acquiring distinctiveness but have not yet done so. Examples of these non-distinctive marks are surnames, geographic terms, some slogans, and other purely descriptive words.

After receiving an application for registration of a trademark on the principal register, an examining attorney may issue a rejection on the basis that the mark is merely descriptive of the goods or services in the application.  Or, the examining attorney may find that the mark may be capable of distinguishing between similar goods or services, but has not yet reached the point of actually serving such a function.  Often the examining attorney will present the option to amend your application to the supplemental register, either affirmatively or in response to a request from an applicant or their attorney.

At first, the option of amending to the supplement register may seem disheartening; however the supplemental register can help maintain and potentially increase the protection of your mark over time.  If you choose not to amend to the supplemental register, the examining attorney could issue a final rejection and the application process could be over for that particular trademark.  While you would still have options and protections under common law, these are very limited in comparison to federal rights. Common law rights would only extend to the geographical places where the trademark is actually in use in commerce, whereas the rights of federally registered marks would extend throughout the entire country.

When considering whether to amend to the supplemental register, there are a few advantages and disadvantages to consider.

ADVANTAGES

  • Suits for infringement can be brought in federal court and federal law will govern the case.  This is advantageous because state trademark laws may differ from federal laws.  The federal courts afford you the comfort of well-settled case law and standards.
  • An examiner may cite your mark against future applications of confusingly similar marks for registration on either register. This is advantageous because the examiner may use your mark to prohibit the registration of any confusingly similar marks, thus further protecting your mark.
  • The mark may not be challenged in an opposition proceeding during the registration process.  This means the mark is not subject to an opposition period in which third parties could oppose the registration and possibly have the registration denied. However, a third party could still later petition for your mark to be cancelled.
  • Upon registration on the supplemental register, you are legally entitled to use the ® instead of just TM.  This serves as actual notice that it is a federally registered trademark.
  • The mark will appear in future users’ searches of the USPTO database.  The appearance of the mark may deter others from using the mark.
  • After five years of registration on the supplemental register, you can reapply for the principal register.  The five continuous years of use and registration on the supplemental registration would aid in showing that the mark has acquired distinctiveness. 
  • Registration on the supplemental register establishes your mark’s priority over other later marks by officially recording your date of first use.

DISADVANTAGES

  • Registration on the supplemental register does not serve as prima facie evidence of the registrant’s exclusive right to use the mark.  Registration on the principal register creates a presumption that the registrant has the exclusive rights to use the mark, whereas the supplemental register does not.
  • Registration on the supplemental register does not create a presumption that the mark is valid. When a mark is registered on the principal register and later becomes the subject of an infringement suit, a court will assume the mark is valid based on its registration on the principal register.  A mark registered on the Supplemental Register will have to prove that it has acquired secondary meaning or distinctiveness to prevail. Otherwise the court will assume the mark is merely descriptive and the descriptive terms must be left available for others to use.
  • Registration on the supplemental register does not create constructive notice of ownership of the mark.  Constructive notice of ownership of a mark prevents anyone else (including a prior user) from claiming good faith, innocent use or expanded use of the same mark after the date of registration, regardless of where the registrant actually uses the mark.
  • Registration on the supplemental register does not allow for incontestability of the mark after five years of registration.  Registrations on the principal register may be considered incontestable after five years of continuous use, meaning that no one could oppose or petition to cancel the mark.
  • Registration on the supplemental register cannot be used as a basis for the Department of Treasury to stop importation of infringements into the United States.

Registration on the supplemental register is not considered the first choice or best option for registration of a mark.  However, obtaining a supplemental register registration can position your mark for future registration on the principal register after five years of continuous use. At a minimum, the supplemental register allows you to establish priority over other users, protect your brand and gain some federal protections.

Topics:  Federal Trademark Register, Trademarks, USPTO

Published In: Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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