When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), in almost all cases you’ll be applying to have the mark placed on the Principal Register of Trademarks. This will give you all of the rights one associates with a trademark registration.
However, in some cases, the mark is not eligible for placement on the Principal Register, but it is eligible for placement on the USPTO’s Supplemental Register. What does that actually mean?
Which Trademarks Are Not Eligible for Registration on the Principal Register?
A mark that can’t be placed on the Principal Register, but can go Supplemental, is one that is either:
- “Merely descriptive of the goods or services”;
- “Primarily merely a surname”; or
- “Primarily merely geographically descriptive of the goods or services”.
The typical sequence of events is that you’ll apply to register your mark on the Principal Register, and then you or your attorney will receive an “Office Action” letter from the USPTO Examining Attorney who’s been assigned to your application. The Office Action will state that the mark in question has been determined to fall into one of the three categories listed above, and therefore is only eligible for the Supplemental Register.
At that point, you can either contest this determination by filing a Response to Office Action, or you can accept it and have the mark placed on the Supplemental Register. Talk to your attorney about which option is best for your trademark application.
What About Generic Terms?
Terms that are generic—meaning one that uses a common word or phrase used to identify the goods or services—cannot be registered or protected as trademarks at all. So truly generic terms, like “Taco Shop” for a taco shop, are not eligible to be placed on the Principal Register or the Supplemental Register.
What Rights Come With Placement on the Supplemental Register?
Even though it’s not ideal, having your mark placed on the Supplemental Register does provide some valuable rights. These include:
- The registrant may use the registration symbol ® in connection with the mark. This will tell the world that you have a registered trademark, which has the effect of deterring potential competitors. Also, many people don’t know about the Supplemental Register, so they may assume that all trademark registrations carry the same rights (this falls under the category of “what you don’t know can hurt you”).
- The registration is protected against registration of a confusingly similar mark. This means that once your mark is on the Supplemental Register, if someone tries to register an identical or confusingly similar mark for similar goods or services, their application will be rejected by the USPTO.
- The registrant may bring suit regarding the trademark in federal court.
- The registration may serve as the basis for a trademark application in a foreign country under the Paris Convention and other international agreements.
Can My Trademark Move from the Supplemental to the Principal Register?
Yes. Even if your mark is “merely descriptive” of the goods or services, it can still be placed on the Principal Register based on five years of substantially continuous and exclusive use in commerce. A Supplemental Registration can be strong evidence of such use.
How does this actually work? In essence, you’d file a new trademark application to have the mark placed on the Principal Register and you’d point to the pre-existing Supplemental Registration as evidence of at least five years of use.
So, for many trademarks, placement on the Supplemental Register is a stepping stone to the full rights afforded by placement on the Principal Register.
In summary, while the Supplemental Register is rarely any trademark owner’s first choice, it does provide substantial rights to the registrant and is often a good option when a mark is ineligible for placement on the Principal Register.
If you have questions about registering your trademark, feel free to contact me.