Many people are aware that the Lanham Act allows you to register a trademark. Many are less familiar with the fact that there are two registers: the Principal Register and the Supplemental Register. The Supplemental Register is governed by Sections 23-28 of the Lanham Act, codified at 15 U.S.C. §§ 1091-1096.
What is the Supplemental Register?
Without oversimplifying too much, the Supplemental Register is a register for trademarks that are descriptive that have not acquired distinctiveness or secondary meaning. Strong and distinctive marks are placed on the Principal Register. Strong marks are usually classified as one of two types: fanciful marks (i.e. created words like EXXON) and arbitrary marks (e.g., “Camel” as related to cigarettes).
In practice, the Supplemental Register is a place to “park” a descriptive trademark for a few years while the owner/holder gathers and creates more evidence that the mark has become distinctive and has acquired/is acquiring secondary meaning.
In general, marks can be ranged on a spectrum of strength. The strongest are mentioned above: fanciful and arbitrary. In the middle are suggestive marks and weaker still are marks that are merely descriptive. At the very weakest are generic marks, which cannot be registered at all. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977) (“light beer”).
If suggestive or merely descriptive marks are denied by the Trademark Examining Attorney, sometimes the applicant is invited to amend and seek registration on the Supplemental Register. We wrote about Hasbro, Inc.’s recent attempt to register a scent mark for its Playdoh toy modeling clay. The Trademark Examiner rejected the application for several reasons including the fact that Hasbro had not presented sufficient evidence that its particular scent had acquired distinctiveness or secondary meaning.
However, the Examiner invited Hasbro to amend its application and place the scent mark on the Supplemental Register. The Supplemental Register is the proper place for a mark that needs more time to acquire distinctiveness.
Going From the Supplemental to the Principal Register
There is no procedure to “convert” a mark from the Supplemental Register to the Principal Register. A new trademark application is required. In the new application, the applicant indicates that he or she or it is the owner of a mark that is registered on the Supplemental Register.
In practice, the new application usually comes around the five-year anniversary. This coincides with the rule that continuous use of a mark in commerce for a period of at least five years is considered evidence of “acquired distinctiveness.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4 (2nd Cir. 1976) (the Examiner “… may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant’s goods for five years preceding the application.”) The five-year time frame also provides plenty of time to use the mark extensively in products, advertising and media, to specifically advertise “to” the mark, to build consumer awareness that the mark is being used to identify the source of the product(s) and to gather consumer survey data. All of this evidence can be presented to the Examiner and — hopefully — will show that the mark as acquired distinctiveness. As such, the mark will be eligible for registration on the Principal Register.
The five year anniversary also coincides with filings necessary to maintain a registered trademark. Many holders of a mark on the Supplemental Register will file their Use Declaration and also file a new application for registration on the Principal Register. If the new application is successful, the owner can let the registration lapse for the Supplemental Register.
Legal Protections Provided By Listing on the Supplemental Register
Although being on the Supplemental Register provides less legal protection than being on the Principal Register, there are still substantial benefits including:
- Mark is listed and thereby “searchable” — thus providing a “notice” to competitors and others conducting clearances searches
- Owner may use the registered trademark symbol — ®
- Mark is protected against registration of a confusingly similar mark
- Infringement lawsuits can be brought
- Registration may serve as the basis for a filing in a foreign country under the Paris Convention and/or the Patent Cooperation Treaty — see here
- Registration on the Supplemental Register helps prove exclusive use of a mark which helps creating evidence of “acquired distinctiveness” for subsequent application for registration on the Principal Register
There are, however, some important differences including these:
- Supplemental Register not available for intent-to-use marks
- Evidentiary presumptions not available — e.g.,validity, ownership and exclusive rights to use
- No US Customs Service recordation with respect to counterfeit products
- Mark cannot become incontestable and, as such, remains vulnerable to cancellation proceedings
Applying for the Supplemental Register Directly: No Opposition Period
It is possible to apply directly for registration on the Supplemental Register. Sometimes this is done because the owner and legal counsel recognize that application for the Principal Register will not succeed. Other times, there is strategy involved. One interesting aspect of applying for the Supplemental Register is that, if approved, the marks are not published for opposition prior to registration.
This may be a useful strategy if there is a need to obtain registration quickly and stealthily. This does not mean that the mark cannot be challenged; just the registration is obtained without an opposition period.
There are two limitations however:
- an application for the Supplemental Register can only be made for “already-in-use” marks; no intent-to-use application is available for the Supplemental Register.
- distinctive, fanciful, and/or suggestive marks are not eligible for the Supplemental Register. Indeed, TMEP § 815.01 specifies that the Examiner should refuse registration if the application is being made for the Supplemental Register and if the Examiner finds the mark to be distinctive.
Contact Revision Legal
If you need more information on trademark law or have other questions about trademarks, contact the lawyers at Revision Legal. Revision Legal offers a wide array of legal services related to internet law, intellectual property and business law, including all services related to trademarks. We can be reached by email or by calling us at 855-473-8474.
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