Registering Your Mark on the Supplemental Register

The Supplemental Register is the United States Patent and Trademark Office’s (“USPTO”) secondary register of trademarks.  This secondary register permits the registration of trademarks that do not otherwise qualify for registration on the primary register of trademarks called the Principal Register.  The only requirement for registration on the Supplemental Register is that a mark is capable of distinguishing goods or services.

Many of our clients have applied for registration of their trademark on the Principal Register only to be denied such registration by the examining attorney from the USPTO as “merely descriptive”.  Except in certain circumstances, a trademark cannot be registered on the Principal Register if the mark’s name merely describes the goods and/or services it identifies to the consuming public.

An alternative option for clients is to register this mark on the Supplemental Register.  The benefits of registering the mark on the Supplemental Register are:

• It permits the applicant’s non-distinctive mark to acquire “secondary meaning” or “acquired distinctiveness”, which means that the mark becomes known to consumers as a designation of source for the applicant’s particular goods or services due to the mark’s long-term and extensive use.
• After five years on the Supplemental Register, the mark may qualify for the Principal Register due to it having acquired distinctiveness.  The applicant may then file a new application for registration on Principal Register.
• The owner may use the registered trademark ® symbol, sue in federal court, and take advantage of certain international treaties.
• The owner may also block subsequent applications for confusingly similar marks for related goods or services.

Registration on the Supplemental Register, however, does not provide the following benefits a mark obtains when registered on the Principal Register:

• Does not afford the owner the exclusive right to use the mark in commerce in connection with its identified goods or services.
• It does not serve as prima facie evidence of the validity of the registered mark or of the trademark registrant’s ownership of the mark.
• It may be an admission that the mark is not inherently distinctive.
• It will not stop importation of counterfeit products.
• Supplemental registration cannot become incontestable.
• A trademark must actually be used in commerce at the time the applicant seeks registration on the Supplemental Register as opposed to “intent to use” applications permitted on the Principal Register.

It is imperative that person or entity seeking to register its mark with the USPTO consult a competent trademark attorney to determine their legal options with said registration.

– Henry M. Cooper, Esq., is a shareholder and handles the intellectual property practice of Bogin, Munns, & Munns, P.A., a full service law firm with offices in Orlando, Clermont, Kissimmee, Deltona, Daytona Beach, Ocala, Melbourne, Gainesville, and Leesburg, Florida.  He welcomes questions and comments regarding the above and can be reached at hcooper@boginmunns.com.

NO LEGAL ADVICE: This blog entry is not intended as legal advice nor should you consider it as such. It is intended only as general information.  You should not act upon this information without retaining professional legal counsel. Please keep in mind that merely subscribing to or reading this blog or otherwise contacting Bogin Munns & Munns, P.A. in the manner that you have will not establish an attorney-client relationship with our firm. Bogin Munns & Munns, P.A. cannot represent you until the firm knows there would not be a conflict of interest, and the firm determines that it is otherwise able to accept the engagement.