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When a trademark is used in commerce, the owner can apply to have the trademark officially registered with the US Patent & Trademark Office (“USPTO”). If the application fees are fully paid, the application is complete and the trademark meets all the legal requirements, then the USPTO issues a Certificate of Registration and the trademark is listed on the Principal Register.
There are many advantages to having an officially registered trademark including:
However, the Trademark Office also maintains a second register — the Supplemental Register. The Supplemental Register is where trademarks (and service marks) are officially listed that are not quite legally sufficient to be placed on the Principal Register. Generally, the legal insufficiency relates to whether the trademark is distinctive enough to function as a trademark.
Trademarks are words, symbols or marks that identify a commercial source of goods or services in the minds of consumers. Distinctiveness is the key aspect of a trademark that creates its functionality. The Trademark Office and legal scholars identify five levels of distinctiveness:
Generic trademarks are not distinctive at all and, as such, do not function as trademarks. For this reason, generic trademarks cannot be registered. Suggestive, arbitrary and fanciful trademarks are generally inherently distinctive and, as such, function as trademarks. For this reason, typically, these three types of trademarks meet the legal requirements for registration and are placed on the Principal Register.
By contrast, descriptive trademarks are often not very distinctive and do not function very well as a trademark. As an example, consider the trademark: MICHIGAN PRODUCE STORE. This word mark is descriptive in the sense that it identifies the type of business, where the business is located and what the business sells. But this trademark is not very distinctive.
That being said, over a sufficiently long period of time, a descriptive trademark can acquire distinctiveness in the minds of consumers. When a trademark owner applies to register a descriptive trademark, the applicant must provide evidence, like consumer surveys, showing that the trademark has acquired distinctiveness. If the evidence is insufficient, the USPTO will deny registration on the Principal Register. But, the trademark might still function enough as a trademark to be listed on the Supplemental Register. In this manner, the Supplemental Register serves as a “parking place” for the trademark while it acquires distinctiveness over time and use.
While not providing as many legal protections as registration on the Principal Register, listing on the Supplemental Register still provides substantial legal benefits. These include:
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For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.
Filing for the Supplemental Register follows essentially the same process as filing for the Principal Register. You submit a standard application through the USPTO’s Trademark Electronic Application System (TEAS), pay the required filing fees, and identify the goods or services with which the mark is used. The key difference is how you respond when the examining attorney issues an office action questioning distinctiveness. At that point, you can amend your application to seek registration on the Supplemental Register instead of fighting — and likely losing — the Principal Register battle.
There is an important eligibility requirement: the mark must be in use in commerce. Unlike the Principal Register, which allows intent-to-use applications, the Supplemental Register does not. You cannot file for the Supplemental Register on an intent-to-use basis. If your mark is not yet in actual use, you must wait.
The Supplemental Register has real limitations that business owners should understand before relying on it as a long-term strategy. Most critically, listing on the Supplemental Register does not create a legal presumption of ownership or validity. On the Principal Register, the registrant enjoys a legal presumption that the mark is valid and that the registrant owns it nationwide. That presumption shifts the burden in litigation. The Supplemental Register gives you none of that. An infringer can attack a Supplemental Register mark far more easily than a Principal Register mark.
Supplemental Register marks also cannot achieve “incontestability.” Under 15 U.S.C. § 1065, a mark on the Principal Register that has been in continuous use for five consecutive years after registration and remains in use becomes incontestable — meaning challenges to its validity on certain grounds are barred. This powerful shield is unavailable for marks on the Supplemental Register.
Additionally, a Supplemental Register listing does not block subsequent applications for confusingly similar marks on the Principal Register. The USPTO will cite a Principal Register mark against a new application if there is a likelihood of confusion, but it will not automatically cite a Supplemental Register mark. That means competitors may be able to register a similar mark on the Principal Register and use that stronger registration against you.
The Supplemental Register is explicitly designed as a temporary home, not a permanent destination. The goal should always be to build evidence of secondary meaning and ultimately move to the Principal Register. Secondary meaning — called “acquired distinctiveness” in the statute at 15 U.S.C. § 1052(f) — is established when consumers have come to identify the mark with a single commercial source rather than the underlying product or service it describes.
Courts and the USPTO look at several factors to determine whether secondary meaning has been acquired: the length and exclusivity of use, the amount and nature of advertising, consumer surveys demonstrating association, unsolicited media coverage, and sales volume. A commonly cited benchmark is five years of substantially exclusive and continuous use, which the USPTO treats as prima facie evidence of acquired distinctiveness under 15 U.S.C. § 1052(f). But five years is a floor, not a guarantee — the quality and exclusivity of use matters as much as duration.
Once secondary meaning is established, the trademark owner files a new application on the Principal Register, submits evidence of acquired distinctiveness, and seeks the full suite of federal trademark protections. If you need guidance navigating this path, contact the trademark lawyers at Revision Legal at 231-714-0100.
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