The U.S. Patent and Trademark Office (“USPTO”) administers the registration of trademarks. There are two Registries, one for fully functional and legally sufficient trademarks (called the Principal Register) and one for trademarks that are not quite “ready.” This second Register is called the Supplemental Register.

Generally, when an individual or business files an application to register a trademark, the goal is to be listed on the Principal Register. However, all trademarks must function as trademarks, which means the trademark must identify a commercial source for goods or services. The “shorthand” for a good functional trademark is that the trademark is “distinctive.” A fanciful or arbitrary trademark is almost always distinctive and, once registered, will be listed on the Principal Register (as long as all other legal requirements are met). The trademark EXXON is a good example of a fanciful trademark.

By contrast, some trademarks are not distinctive (to start) and, thus, do not function as trademarks. This is typically because the trademark is merely descriptive of the goods/services, the industry, the location, the type of business, etc. An example would be GREATER CITY GROCERIES. As can be seen, the trademark describes the type of business and provides a general location.

Now, the thing is that trademarks evolve over time, and as the trademark is used in commerce. Thus, GREATER CITY GROCERIES might become a functioning trademark over time as the trademark is used and consumers begin to understand that the trademark references a certain place, for certain goods, for a certain atmosphere, a certain quality, etc. Legally, this is the concept of “acquired distinctiveness.”

When a trademark application is submitted, if the trademark is too descriptive, the USPTO might ask whether the applicant is willing to have the trademark placed on the Supplemental Register. The purpose of the Supplemental Register is to allow a descriptive trademark to “ripen” and to acquire the distinctiveness that is the essence of a trademark. When asked, an applicant has the option to say “no.” However, there are some benefits to agreeing to allow a trademark to be placed on the Supplemental Register. This includes:

• Ability to sue in federal court to block others from using a similar trademark
• Potential assistance with establishing a date-of-use priority if a challenge is made by the owner of a competing trademark
• Authority to use the “circle R” symbol on products, packaging, and marketing — the “circle R” symbol is a signifier that a trademark has been registered; this can help “wave off” potential infringers
• The Supplemental Register is publicly available and searchable, which puts potential infringers on notice of your trademark rights and claims
• Listing on the Supplemental Register can be used as the basis for an international trademark registration
• Removal of the risk of an Opposition Proceeding being filed since trademarks placed on the Supplemental Register are not published

Note that, most often, placement on the Supplemental Register is temporary. Two to five years is common. Once it is provable that the trademark in question has acquired distinctiveness, the owner can apply to have the trademark transferred to the Principal Register.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

How the Supplemental Register Works in Practice

When a trademark applicant submits a proposed mark that the USPTO examiner finds “merely descriptive” of the goods or services, the applicant has a choice: abandon the application, argue that the mark is not merely descriptive, argue that the mark has acquired distinctiveness (also called “secondary meaning”), or amend the application to seek registration on the Supplemental Register.

The Supplemental Register was created by the Lanham Act in 1946 to serve as a staging ground for marks that are capable of becoming distinctive over time. Registration on the Supplemental Register does not give the mark owner all the rights of a Principal Register mark. But it is far from useless — and for certain strategic purposes, it is the right choice.

Benefits of Supplemental Register Registration in Detail

The benefits of Supplemental Register registration include:

• Federal court access — a Supplemental Register registrant can sue for trademark infringement in federal court, giving access to nationwide injunctive relief and potentially significant damages
• Use of the ® symbol — the registered trademark symbol can be used with the mark; this is not available for unregistered marks (which can only use ™) and serves as notice to potential infringers
• International filing basis — a Supplemental Register registration can serve as the basis for an international trademark application under the Madrid Protocol, providing a path to protection in over 130 countries
• Priority date evidence — the registration establishes an official USPTO record of first use, which can be valuable evidence in a later dispute over who used the mark first
• Blocking power in USPTO searches — a Supplemental Register registration appears in USPTO trademark searches, which may deter third parties from filing confusingly similar applications

The Path from Supplemental to Principal Register

The Supplemental Register is not a permanent home for a trademark. The goal is to use the mark in commerce, build brand recognition among consumers, and ultimately demonstrate “acquired distinctiveness” sufficient to move to the Principal Register. Under 15 U.S.C. § 1052(f), five years of substantially exclusive and continuous use of a mark in commerce creates a rebuttable presumption that the mark has acquired distinctiveness.

Once sufficient evidence of acquired distinctiveness exists, the trademark owner can file a new application for the Principal Register, or, in some cases, a petition to transfer the existing Supplemental Register registration to the Principal Register. Building the evidence file during the Supplemental Register period — including documentation of sales volume, advertising expenditures, unsolicited media coverage, and consumer recognition survey evidence — is essential to a successful Principal Register application.

What the Supplemental Register Does NOT Provide

Trademark owners on the Supplemental Register must understand its limitations:

• No incontestability — Principal Register marks that have been in continuous use for five years and have not been challenged can be declared “incontestable” under 15 U.S.C. § 1065; Supplemental Register marks never achieve incontestability
• No nationwide constructive notice — a Principal Register registration provides constructive notice to all subsequent users of the mark nationwide; a Supplemental Register registration does not
• No presumption of validity — in litigation, a Principal Register registration is prima facie evidence that the mark is valid and that the registrant owns it; a Supplemental Register registration carries no such presumption

Contact the Attorneys at Revision Legal

If you have questions or need legal advice, contact the experienced attorneys at Revision Legal. Our team handles trademark registration matters for businesses and individuals nationwide. Call us at (855) 473-8474 or use the contact form on our website.