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The U.S. Patent and Trademark Office's (USPTO) Supplemental Register is a list of trademarks and service marks that do not qualify for the Principal Register.5 min read
2. Why Is the Supplemental Register Important?
3. Reasons Not to Use the Supplemental Register
4. Reasons to Use the Supplemental Register
5. What Can Go on the Supplemental Register and What Cannot?
6. Common Mistakes
7. Frequently Asked Questions
8. Steps to File
What Is the Supplemental Register?
The U.S. Patent and Trademark Office's (USPTO) Supplemental Register is a list of trademarks and service marks that do not qualify for the Principal Register. Names and symbols that are being used in business but aren't specific and unique enough to end up on the Principal Register qualify for the Supplemental Register.
There are several differences between the Supplemental Register and the Principal Register. The Principal Register has mostly unique trademarks. If you have a trademark on the Principal Register, then you own that trademark in all 50 states.
So, in a lawsuit, the person disputing your principal registration would have a harder time proving you're not the owner of the trademark or service mark. If your mark is on the Principal Register, you have "full protection" because you're the presumed owner. The U.S. Federal Court or the USPTO assumes the mark is valid, especially if the other party cannot prove otherwise.
On the other hand, in a lawsuit disputing a mark on the Supplemental Register, the plaintiff as well as the court can determine that the trademark is descriptive or functional and, therefore, invalid. It's the mark owner's responsibility to prove that the trademark differs from others. If the trademark is newly registered on the Supplemental Register, you might have a harder time proving your ownership.
Generic terms do not qualify for either the Supplemental Register or the Principal Register because no one has the exclusive right to own something that refers to goods or services in the generic sense. By contrast, a mark with a secondary meaning can be deemed descriptive. Known as "acquired distinctiveness," this descriptive mark can be a source identifier for goods and services because of its long-term use.
Although they are not subject to opposition proceedings, registrations on the Supplemental Register can be canceled at any time. A third party might go through a cancellation proceeding with the USPTO or a court proceeding to end the trademark registration.
Why Is the Supplemental Register Important?
Most businesses use descriptive trademarks to market their goods and services, which is why these marks end up on the Supplemental Register. For example, words such as "great," "sweet," or "super" might be part of your descriptive product name. However, those words aren't unique. Therefore, they would qualify as a Supplemental Register trademark. As long as no one has claimed the same trademark, you can register your product or service under that name.
One benefit of a Supplemental Registration is that you can use the registered symbol (®) with your product or service name. This lets everyone know your trademark is federally registered. You still get government protection from anyone who uses a similar trademark.
Another benefit is that other people or businesses cannot register a similar trademark on the Principal Register or the Supplemental Register. This allows you to "hold a place" on the Supplemental Register while your mark acquires distinctiveness. While you can use a descriptive mark in the United States without a Supplemental registration, someone else might try to register a similar mark on the Principal Register. If this happens, you would have to oppose or cancel that trademark through a court proceeding.
Reasons Not to Use the Supplemental Register
While the Supplemental Register offers basic government protection for your descriptive trademark, it does not:
- Give you exclusive rights to use the trademark;
- Support future claims if the trademark reaches incontestability status;
- Notify of ownership or presumptive ownership in an infringement case; or
- Allow the trademark owner to be excluded by the U.S. Bureau of Customs.
Reasons to Use the Supplemental Register
Benefits of using the Supplemental Register include:
- The ability to use the registered sign (®) or language such as "Reg. U.S. Pat. Off." to protect from trademark infringement;
- Permission to register the trademark outside the United States, as long as that country offers similar trademark rights and protections; and
- The right to collect money, relief, or damages if you win an infringement lawsuit.
What Can Go on the Supplemental Register and What Cannot?
These items cannot qualify for the Supplemental Register:
- An intent to use application -- alleged use must be proven
- A functional mark
- Extended protection of an international registration protected by the Madrid Protocol
- A mark that can also be added to the Principal Register
- Any mark that is difficult to determine if it is a product or service, even if it is generic
Examples of what can go on the Supplemental Register include:
- Marks that are already being used
- Marks issued in the applicant's country of origin
- Marks similar to ones listed on the Principal Register for related products and services
A business owner can easily prove ownership of a trademark on the Supplemental Register, making it difficult for others with similar marks to claim infringement.
One mistake owners make is not using the mark before registering it on the Supplemental Register. Marks must be in "intent to use" status before qualifying for the Supplemental Register. Because of this rule, any marks registered under the Madrid Protocol cannot transfer to the Supplemental Register.
There is no time limit for when a Supplemental Registration can no longer be contested. Meanwhile, a mark that's been on the Principal Register for five years can become incontestable.
Frequently Asked Questions
- What are the benefits of registering a design mark on the Principal Register versus the Supplemental Register?
The design mark's text gets the same protection on the Supplemental Register as it would on the Principal Register. However, a mark with both text and design gets greater protection under the Principal Register.
- Can a supplemental registration be converted to a principal registration?
A Supplemental Register cannot automatically become a Principal Register. However, once a mark on the Supplemental Register has been used regularly for five years, the owner can apply the mark for the Principal Register.
- What are some other examples of Supplemental Register trademarks?
Other than descriptive names, other trademarks can include geographic terms, surnames, and nondistinctive, nonfunctional trade dress.
- If you need to amend a Supplemental Register application, do you have to change the date of filing?
No, you do not need to change the filing date after you make changes to the Supplemental Register application.
Steps to File
You can find application forms for the Supplemental Register through the USPTO's Trademark Electronic Application System (TEAS). Applicants can also contact the Trademark Assistance Center at 1-800-786-9199 if they prefer to use the preprinted, scannable form. All applications must be in English.
Filing fees vary, depending on whether the applicant files electronically or via paper. The USPTO also accepts self-created forms, as long as they appear on letter size paper (8 1/2 by 11 inches) and are typewritten and double-spaced. The self-created form must have margins of at least 1 1/2 inches on the top and left side of the paper. The USPTO prefers electronic and preprinted applications.
If you need help applying for the Supplemental Register, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.