The U.S. Trademark Act (Lanham Act) provides for two separate registers for the registration of trademarks with the U.S. Patent and Trademark office (USPTO). Most practitioners and trademark holders are largely familiar with the Principal Register; yet, many have never heard of the secondary register, known as the Supplemental Register. Since the enactment of the law in 1946, the Supplemental Register (Lanham Act Sections 23-28, 15 U.S.C. §§ 1091-1096) has afforded a place to register a mark that is inherently descriptive but that can potentially identify goods or services with a source. The names of new magazines, which typically are descriptive of the contents of the magazine, are a good example of marks that are registered on the Supplemental Register. The anticipation is that when the magazine becomes better known, through circulation, the mark may be registered on the Principal Register on the basis of acquired distinctiveness.
Differences Between the Two U.S. Trademark Registers
The Principal Register is the site for the registration of marks that are distinctive, by virtue of either their unique characteristics or their long and exclusive use. Registration on the Principal Register provides the registrant with, among other things, the presumption of the validity of the mark, prima facie evidence of ownership of the mark and acknowledgment of its continuous and exclusive use. Further, there is the possibility, after five years of continuous, uninterrupted use from the date of registration, of achieving incontestable status (limiting the grounds of third-party attacks to cancel the mark). An application for registration on the Principal Register must provide, to the satisfaction of the USPTO, proof that the mark meets the basic requirements for trademark registration and must survive publication and an opposition period.
The Supplemental Register is an enigma to most. Often it is first heard about and understood when, during the prosecution of an application for registration on the Principal Register, the USPTO examining attorney issues an office action refusing registration on the ground that the mark is “merely descriptive.” If the examining attorney believes that the mark has the potential to identify the source of the goods or services with the applicant, he or she might offer to allow the applicant to amend the application from the Principal Register to the Supplemental Register.
Registration on the Supplemental Register is limited to marks that are in use (as opposed to marks that are applied for on the basis of intent to use) in the United States or its territories and those based on an issued foreign registration in the country of origin of the applicant. An intent-to-use application can be amended to the Supplemental Register only after an allegation of use is filed and accepted. An examining attorney cannot suspend such an application to await the filing of the allegation of use; thus, if it appears likely that the application will be refused on descriptiveness grounds, waiting until use of the mark is imminent is advisable. The filing of an allegation of use in connection with an intent-to-use application that is amended to the Supplemental Register results in a change of the priority date of the application; that is, the USPTO will consider the filing date of the amendment to allege use to be the effective filing date of the application (37 C.F.R. § 2.75(b)). Consequently, the examining attorney must conduct a new search of USPTO records for conflicting marks. While this may be the only possible course of action for an applicant, consideration should be given to such a move, as there may be third-party applications that have been filed in the interim between the original filing and the filing of the amendment to allege use and that will therefore have priority over the amended-to-Supplemental Register application.
Typically, applications arrive on the Supplemental Register through amendment of an application filed on the Principal Register. An applicant that believes its mark is descriptive but may become distinctive through use may, however, file an application directly on the Supplemental Register.
The Supplemental Register is only for marks that are descriptive in nature. Thus, if a mark is distinctive, the mark cannot be registered on the Supplemental Register; therefore, if the application is being prosecuted on the Supplemental Register and is found to be distinctive, the application must be amended to the Principal Register or the mark will be refused registration (see TMEP § 815.01).
Key Benefits That Attach to Marks on the Supplemental Register
The Supplemental Register offers some important benefits: the mark will appear in trademark searches and that the registrant can use the ® symbol, and other indicia of registration, in connection with the mark. Further, the registration number of a Supplemental registration is consecutive with marks on the Principal Register, such that the particular register cannot be determined from the registration number alone. In addition, having a mark registered on the Supplemental Register can, through treaty, assist in achieving registration and/or give priority to the application for the mark in some foreign countries and regions. Further, the registration on the Supplemental Register may be used to prove exclusive use of a mark for a five year period, one of the aspects of proving distinctiveness for registration on the Principal Register.
Vulnerability of a Mark on the Supplemental Register
A mark on the Supplemental Register can never achieve incontestability and a request for such (which on the Principal Register is typically made between the fifth and sixth year from registration along with the declaration showing use) will be rejected by the USPTO. As such, should a third party be able to show earlier use of a confusingly similar mark, or show any cause proving superior rights (or any other cause for cancelation), it can move to cancel a registration on the Supplemental Register at any time during the life of such registration.
Subsequent Registration on Principal Register
Practitioners often discuss the amendment or the moving of a registration on the Supplemental Register to the Principal Register. There is in fact no such procedure. The owner of a registration on the Supplemental Register must file a new application for the mark to secure registration on the Principal Register. In the new application the registrant may note that it is the owner of a registration for the mark on the Supplemental Register. Further, the registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness (15 U.S.C. § 1096), jeopardizing subsequent registration on the Principal Register or challenge of an infringer.
While the continuous use of the mark for a period of at least five years is considered as some evidence of acquired distinctiveness, it is often not sufficient to overcome the descriptiveness deficiency of a mark. Oftentimes, the examining attorney will request more proof of acquired distinctiveness, such as evidence of notoriety, extensive advertisement of the mark, and declarations from third parties showing that the mark has become known and associated with the goods or services of the applicant/registrant.
In practice, as the five year period of use to show distinctiveness coincides with the time period during which the registration on the Supplemental Register must be maintained (between the fifth and sixth year from registration), registrants usually will file the necessary use (Section 8) declaration and then concurrently file a new application on the Principal Register. This allows the owner to maintain the Supplemental Register registration of its mark while it applies for registration on the Principal Register. If registration on the Principal Register is achieved, the Supplemental Register registration may then be allowed to lapse. Lapse naturally occurs on the tenth anniversary of registration when a renewal declaration is not filed. If closure is desired more rapidly, a request for an express abandonment can be filed with the USPTO requesting that the registration be abandoned. If the USPTO is not convinced that the mark has become distinctive, and therefore does not issue a registration on the Principal Register, the Supplemental Register registration continues to protect the registrant.
Strategy Regarding Nonpublication of Supplemental Register Marks
Marks applied for (or moved to) the Supplemental Register are not published for opposition prior to registration; once allowed, such registrations issue in due course without publication. If a registration must be obtained quickly or stealthily, an applicant could directly file an application for a mark (not otherwise eligible for registration on the Principal Register) on the Supplemental Register and surprise the market with a registration of its mark without publication.
Benefits from Registration on the Supplemental Register
To summarize, the Supplemental Register offers the following advantages:
- Is a secondary option for registering marks that have the potential to be distinctive and act as source indicators
- Creates a first registration useful for securing some counterpart foreign registrations and priority there
- Permits the use of the indicia of registration, including the registration symbol ® and such phrases as “Reg. U.S. Pat. and T.M. Off.”
- Provides notice to those conducting clearance searches
- Serves as a bar to registration of subsequent confusingly similar marks
- Is a means of protecting a mark while distinctiveness is acquired
Even though the Supplemental Register has been available for more than 60 years, its importance as a means of securing registration, and thereby a measure of protection, for marks having the potential to serve as source indicators often is not well understood. Brand owners and their counsel should be aware of this option, the steps that must be taken to register and the work that may subsequently be done to help advance the mark to the Principal Register. In this way a registration that might not otherwise be possible on account of a mark’s inherently descriptive nature can be secured and held before, during and after the mark acquires distinctiveness.
For more information, visit INTA's Fact Sheet on the Principal vs. Supplemental Register
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association