By Rich Stim
The federal Supplemental Register is a secondary list maintained by the U.S. Patent and Trademark Office for trademarks and service marks that do not qualify for the Principal Register. Any name or symbol may be placed on the Supplemental Register as long as it is in actual use in commerce that Congress may regulate and can in some way distinguish the applicant’s goods or services from others.
Descriptive, surname, and geographical term marks all qualify for the Supplemental Register. Generic terms do not qualify, since by definition a generic term calls to mind a type of product rather than a specific product. For instance, “Blue Jeans” means any pants made of blue denim, rather than a specific manufacturer’s jeans. Marks that are barred from the Principal Register for reasons other than sheer descriptiveness are also barred from the Supplemental Register.
It is often difficult to prove infringement of a mark listed on the Supplemental Register, because such registration is an admission by the mark’s owner that the mark is insufficiently distinctive to be placed on the Principal Register. Neither trademark nor unfair competition laws protect marks in any significant way unless consumer confusion is likely to result. Consumers are not likely to be confused by dual uses of any marks unless they are well known or memorable—in other words, distinctive. As a result, marks on the Supplemental Register do not receive all the protections given to those on the Principal Register. Specifically, placement on the Supplemental Register does not:
- provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation
- support a later claim of incontestability status
- imply the right to exclusive use of the mark, or
- allow the mark’s owner to request exclusion of imports by the Bureau of Customs.
On the other hand, supplemental registration does offer some benefits such as:
- the right to use the circled “®” or “Reg. U.S. Pat. Off.” abbreviation to discourage would-be infringers
- the ability to register the mark in countries that offer reciprocal trademark rights, and
- the right to obtain injunctive relief, money damages, treble damages, and defendant’s profits in the unlikely event that the mark owner should win an infringement action (assuming that the mark bore the proper notice of registration).
An applicant should always apply for the Principal Register first. If rejected, an applicant can then apply for the Supplemental Register.
Learn more about Patent, Copyright, and Trademark.