According to Trademark law, marks that are not eligible for registration on the Principle Trademark Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register (TMEP §§815). Most small business owners and others filing for Trademark protection have never heard of the Supplemental Register, but it can often be helpful to Trademark applicants. The Supplemental Register can provide business owners with similar to protection to that of the Principal Register, which is what trademark applicant’s apply for. The most common type of marks suitable for the Supplemental Register are:
- Descriptive marks;
- Surnames;
- Geographic terms; and
- Nondistinctive, nonfunctional trade dress
Descriptive marks are marks that merely describe the products or services for which the mark are used. Descriptive marks normally cannot distinguish an applicant’s products or services from others. However, these marks can become distinctive or acquire secondary meaning over time. Once a descriptive mark has been registered on the Supplemental Register for five (5) years, secondary meaning is presumed and the mark can then be available for registration on the Principle Register.
Surnames are treated the same as descriptive marks when it comes to Trademark law. If the public recognizes the trademark name as a primarily a surname (i.e. HOWARD’S HOUSE DESIGN or VILLANUEVA’S VACCUMS) the mark is likely not registerable on the Principle Register. However, just as with descriptive marks, a mark consisting primarily of a surname can become distinctive or acquire secondary meaning based on a long period of use or after being registered on the Supplemental Register for five (5) years (i.e. MCDONALDS or HILTON).
Geographic terms are given the same treatment as both Descriptive and Surname marks, as mentioned above. Using a geographic term within your mark can result in a refusal of registration until such time as consumers begin to recognize the mark as source/company that supplies the goods or services (i.e. CALIFORNIA PIZZA KITCHEN or IDAHO POTATOES). Registering for a Trademark that includes a geographic term on the Supplemental Register for five (5) years will achieve the acquired distinctiveness or secondary meaning required for registration on the Principle Register.
Nondistinctive or nonfunctional trade dress typically refers to the shape or outline of a product or the layout of a restaurant or store (i.e. The Apple Iphone, the Coca Cola Bottle and the layout of the Taco Cabana restaurant). These marks also require acquired distinctiveness or secondary meaning in order to achieve registration on the Principle Register, however, that can be achieved by being registered for five (5) years on the Supplemental Register.
The rights accorded with registration on the Supplemental Register are still very strong and should be considered if your application is refused registration on the Principle Register for any of the above reasons. Registration the Supplemental Register allows for registrant to use the ® symbol, the registrant will be protected from later registration of confusingly similar mark, the registrant may also bring a suit for trademark infringement in a federal court and the registration may serve as a basis for filing in a foreign country. Lastly, a Supplemental Registration can never be opposed; the registration can only be cancelled after registration.
The downside to registration on the Supplemental Register is that the owner will not receive the presumed ownership, validity and exclusive rights to use the mark, which trademarks registered on the Principle Register receive. Additionally, a Supplemental registration cannot stop the importation of counterfeited products at the border, nor can the registration ever become incontestable.
The Supplemental Register is rarely understood or contemplated by most small business owners or trademark applicants. However, it can be a very powerful tool if an applicant happens to be refused registration on the Principle Register. If you happen to receive an office action from the USPTO based on any of the above reasons and would like to discuss Supplemental registration further, please reach out to one of the trademark attorneys here at Fears | Nachawati, PLLC and we would be glad to speak with you.