I don’t usually take requests, but sometimes the popular demand is too much to ignore. I’ve been asked twice in one week about any advantages to registering on the Supplemental Register of the United States Patent and Trademark Office (USPTO).
Often when one applies to the Principal Register of the USPTO, the examining attorney will say, in his or her opinion, that the applied-for mark is merely descriptive or geographically descriptive. However, if the examining attorney thinks the mark has the potential to become distinctive, then the mark can be put on the Supplemental Register — and perhaps be the subject of a later application for the Principal Register, after acquiring distinctiveness. (Sounds like a line from the coach in Rocky: “You ain’t much now, but you got potential.”)
The disadvantages of the Supplemental is that it doesn’t come with many teeth. It is not proof of exclusive rights to use the trademark. The in terrorem effect is therefore pretty minimal to a trademark practitioner on the other side, because you don’t get attorneys’ fees or statutory damages — or any of the other nice things that come with being on the Principal Register, like being able to say “You have to a) stop, and b) pay me if you don’t stop.” (Of course, you could first sue for both, and ask questions later.)
With the Supplemental you do not have that right, but the advantages are the following:
- You can still get a registration number.
- You can still use the Ⓡ symbol when you display the mark.
- If you are sending your demand letter to someone who is not schooled in trademark law, it can have the in terrorem effect of getting them to stop. (But I would not rely on the Supplemental Register alone as the basis for bringing a lawsuit unless….)
- … The date set forth on the Supplemental Registration can demonstrate that you were using your mark in commerce before the owner of a confusingly similar mark was using theirs.
- You may also have common law trademark rights from exclusive use of your mark in a particular state or region
- Supplemental Registration is useful for securing priority in some foreign jurisdictions — that is, those which have trademark treaties which recognize a U.S. registration of any kind (Supplemental or Principal) as a basis for an earlier filing date in the foreign trademark office. HOWEVER, many jurisdictions also reject applications based on mere descriptiveness — and unlike the USPTO, do not allow a second chance in the form of a supplemental register.
A listing also gives notice to other applicants who are doing clearance searches that you have filed. If the clearance search does not dig a little deeper to see whether it is under the principal or supplemental registries, it could scare off someone else from registering a confusingly similar trademark.
Keep in mind, though: You cannot file on the Supplemental Register based on an intent to use; such registration must be based on actual use; and your effective date is the date of actual use (rather than the date you filed your intent to use application, which is another advantage of the Principal Register).
So: a listing in the Supplemental Register is an opportunity to assert registration, even if the mark presently lacks distinctiveness. A USPTO rule gives you a presumption of distinctiveness after you have been using a trademark in commerce for five years or more. You can’t simply upgrade from the Supplemental to the Principal — rather, you’ll have to file another application — but at least it gives a basis for saying, “I have been here for five years, look at my Supplemental Registration.” In essence, being part of the Supplemental Register is a way of making a placeholder to protect the trademark while you are acquiring the distinctiveness necessary to obtain registration on the Principal Register.
