Trenam Law IP

The Supplemental Register is a valuable tool under the Lanham Act for trademark owners seeking to protect marks that are descriptive and not inherently distinctive. This post, along with the video, explains how the Supplemental Register works, its advantages, limitations, and the process for transitioning to the Principal Register.

What is the Supplemental Register?

The Supplemental Register at the U.S. Patent and Trademark Office (USPTO) is designed for marks that are descriptive and lack immediate distinctiveness. Examples include terms that describe a product’s qualities, features, or functions. Unlike the Principal Register, marks on the Supplemental Register are not presumed valid but still offer strategic benefits.

Range of trademark strength from generic to coined.

Advantages of the Supplemental Register

  1. Use of the ® Symbol: Registrants can display the federal registration symbol, deterring potential infringers.
  2. Blocking Confusingly Similar Marks: The Supplemental Register can block subsequent applications for confusingly similar marks.
  3. Basis for Foreign Applications: Registrations can serve as the foundation for filing trademarks internationally under the Paris Convention.
  4. Standing for Infringement Actions: Supplemental Register marks allow registrants to enforce rights in federal court.

Limitations of the Supplemental Register

  1. No Legal Presumptions: Registrations lack presumptions of ownership, validity, and exclusive rights.
  2. No Incontestability: Marks cannot achieve incontestable status after five years.
  3. Customs Enforcement: U.S. Customs cannot seize counterfeit goods based solely on Supplemental Register marks.
  4. Intent-to-Use Restrictions: Applications must show use in commerce before registration.

Transitioning to the Principal Register

Marks can “ascend” to the Principal Register by acquiring secondary meaning. This often occurs after five years of exclusive use, during which evidence like sales records, advertising spend, or public recognition can be submitted to prove distinctiveness. Marks may achieve this earlier with substantial evidence, such as widespread publicity.

Path from Supplemental to Primary Register

The Supplemental Register is not merely a placeholder; it provides meaningful protections and allows trademark owners to secure their rights while building the distinctiveness required for full federal registration.