Trademark registration on the supplemental register: Pros and Cons

Supplemental register is for non-distinctive trademarks

When reviewing a trademark application, the USPTO will refuse to register a trademark on the principal register if it deems the mark to be “merely descriptive” of the goods and services of the applicant. If this occurs, counsel may suggest applying to the Supplemental Register, which is reserved for marks that are descriptive, but not inherently distinctive to be recognized as a trademark.

Option to amend or argue acquired distinctiveness

If a descriptiveness refusal is made, then the applicant has two options.

1. The first option is to amend the trademark application to request registration on the supplemental register instead of the principal register.
2. The second option is to argue that the proposed mark is actually suggestive[1], not descriptive of the goods and services. If successful, the mark would proceed to registration on the principal register.

Assess the likelihood of overcoming the descriptiveness refusal

To decide whether to take option 1 which would provide fewer benefits or option 2, an assessment should be made as to the likelihood of overcoming the descriptiveness refusal.  The descriptiveness refusal could be overcome by presenting:

1. arguments to the examining attorney that the mark is suggestive and not descriptive; or
2. evidence that the proposed mark has acquired distinctiveness which means that the public now recognizes the mark as a trademark of one person or entity.

If the chances of overcoming the descriptiveness refusal are low, then the applicant should strongly consider registration on the supplemental register.  The alternative is to spend more money with a low probability of success. If the applicant does request registration on the supplemental register, then it is important to understand what the applicant is giving up via registration on the supplemental register.

Benefits of principal register not granted to supplemental register

The following are benefits of registration on the principal register which are NOT given to marks registered on the supplemental register.  Registration of the mark on the principal register receives the benefits of prima facie or “on its face” evidence of the:

1. validity of the mark;
2. registration of the mark;
3. registrant’s ownership of the mark; and
4. registrant’s exclusive right to use the registered mark;

in commerce on or in connection with the goods or services specified in the registration.

Also, registration of a mark on the principal register has the option of becoming incontestable after five years of substantial and exclusive use.  An incontestable mark is stronger because such status limits the ways that the validity of the trademark registration can be attacked.

The supplemental registration does not provide the benefits mentioned above.

Supplemental register – Pros

Registration on the supplemental register does provide some benefits to the trademark owner.  For example, registration on the supplemental register:

1. prevents registration of another mark on the principal and supplemental registers if a likelihood of confusion exists with the mark registered on the supplemental register;
2. the option to refile a trademark application and request registration on the principal register later usually after five years of substantial and exclusive use of the mark in commerce to show acquired distinctiveness
3. allows the trademark owner to use the circle R ®; and
4. the option to file a suit for infringement in federal court instead of state court.

A significant benefit is number 2 above.  Put simply, registration of the mark on the supplemental registration is a road to registration on the principal registration is everything goes well in the future.

Supplemental register – Cons

A significant downside of registration of a mark on the supplemental register is that another entity could acquire state trademark rights or common law trademark rights in other parts of the United States where the trademark owner is not using the mark.  This other entity’s use of the same or similar mark would give that entity senior rights to the trademark applicant.  This situation would be detrimental to the trademark applicant’s ability to secure registration on the principal registration later on.

One must keep in mind that registration of the proposed mark on the supplemental register does not confer trademark rights to the trademark applicant.  It merely prohibits others from registering a confusingly similar mark on the principal and supplemental registers.  This benefit is described in number 1 above.

Arguing against descriptiveness-When to incur costs

If, at the time of receiving the descriptiveness refusal, the applicant has evidence that the proposed mark has acquired distinctiveness[2], then it is generally beneficial to incur the cost to submit the evidence than to just request registration on the supplemental register.  Building brands takes considerable time and money and securing registration on the principal register now may be worth the cost as opposed to risking the possibility of not being able to do register the mark in the future.

If such evidence of acquired distinctiveness is not available yet, then the next question is whether it is worthwhile to file arguments to show that the mark is not descriptive but suggestive.  If successful, the mark would be registered on the principal register and receive all of the benefits described above.  It depends on an assessment of the likelihood of success.

The factors involved in deciding which route to take are dependent on many factors.  Those factors include:

1. the available funds of the trademark applicant to prepare and submit such arguments
2. the likelihood of successfully convincing the examining attorney that the mark is suggestive
3. the risk tolerance of the trademark applicant that another entity might acquire state or common law trademark rights, and other factors

Route if no funds are available

If the trademark applicant does not have the money to prepare and submit arguments or present evidence of acquired distinctiveness, then the trademark applicant should request registration on the supplemental register.  After five years of substantially exclusive and continuous use, then the trademark applicant may refile another trademark application and request registration on the principal register.  The goal is to prevent others from registering the same or similar mark on the principal register which keeps the principal register clear for registration of your mark after an extended period of time has elapsed and the mark has acquired distinctiveness.

When dealing with trademark issues, it’s always best to seek the guidance of an attorney experienced in trademark law. We can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your business.

End Notes:

[1] Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of the goods or services.  A suggestive mark is different from a descriptive term, which immediately tells something about the goods or services.  For example, a suggestive mark is SPEEDI BAKE for frozen dough because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be based into bread.  TMEP 1209.01(a).

[2] Acquired distinctiveness is also referred to as secondary meaning.  Acquired distinctiveness means that even though the descriptive mark is primarily perceived as describing the goods and services, consumers have come to recognize the mark as serving a second meaning, namely, as a moniker to identify the source of the goods and services.  Acquired distinctiveness may be shown by submitting evidence of use of the mark for the past five years substantially exclusive and continuous.

I invite you to contact me with your trademark questions at 9949) 433-0900. Please feel free to forward this article to your friends. As a Trademark Attorney helping clients in Orange County, I welcome your inquiries to see if we are a good fit.