WHAT IS THE SUPPLEMENTAL TRADEMARK REGISTER?
After seven months, you receive a letter from the USPTO examining attorney assigned to your Trademark application, informing you that, “Your mark has been accepted for the Supplemental Register.” Sounds promising, but what on earth does that mean?
What is the Supplemental Register?
The Lanham Act (the U.S. Trademark Act) provides for two Trademark Registers: the Principal Register and the Supplemental Register. The Principal Register provides extensive protections for marks that fulfil all the requirements of the law.
The Supplemental Register, provides protection for marks which are merely descriptive but which have the potential over time to gain ‘distinctiveness’ by identifying goods and services with a source. To be registered on the Supplemental Register, marks must be descriptive; already in use; and have the potential to become distinctive.
How does the process work?
The Supplemental Register provides a five-year period during which time the Mark, through use, may acquire the distinctiveness/secondary meaning needed for registration on the Principal Register. At the end of the five years, if the goods or services have acquired distinctive/secondary meaning, the registrant can apply to move to the Principle Register.
What protections does the Supplemental Register afford?
Registrant can use the ® symbol.
Mark will appear in any TESS Trademark Search.
The registration search will not reveal which register contains the mark, because registration on the Supplemental Register is consecutive with marks on the Principal Register.
Having a mark registered on the Supplemental Register can assist in achieving registration and/or give priority to the application for the mark in some foreign countries.
Registration on the Supplemental Register may be used to prove exclusive use of a mark for a 5-year period – one of the aspects of proving distinctiveness for registration on the Principal Register.
What are the downsides?
A mark on the Supplemental Register can never achieve incontestability, and is more vulnerable to challenges. Should a third party demonstrate earlier use of a confusingly similar mark or show any cause proving superior rights, it can move to cancel a registration on the Supplemental Registration at any time during the life of the registration.
NEXT STEPS
After the Mark has been on the Supplemental Register for five years, the Registrant can file a new application for the mark to secure registration on the Principal Register. However, it is key to maintain registration on the Supplemental Register until application is approved for the Principal Register.