What is the Supplemental Registry and is it Right for your Trademark?
Filing a trademark is one of the most effective steps a business can take to protect its brand. However, not all trademarks qualify for the same level of recognition and protection under U.S. law. If your trademark doesn't meet the strict requirements for the USPTO's Principal Register, the Supplemental Register could be an alternative.
But what exactly is the Supplemental Register? How does it differ from its counterpart, the Principal Register, and is it the right choice for your business? The trademark process can be very confusing and challenging for business owners. This article breaks down the advantages, limitations, and considerations relating to the Supplemental Register to help you make an informed decision.
What Is the Supplemental Trademark Register?
While the Principal Register is the gold standard for trademarks, the Supplemental Register is designed for marks that don't meet all the criteria for "distinctiveness" required by the Principal Register. Examples include descriptive marks (e.g., brand names that describe the product or service) and surnames that haven't yet developed strong consumer recognition.
Essentially, the Supplemental Register allows businesses to still establish a formal record of ownership for their trademark, even if the trademark isn't eligible for the Principal Register at the time of application.
Why Consider the Supplemental Register?
If your mark doesn't qualify for the Principal Register because it is deemed too descriptive or lacks distinctiveness, the Supplemental Register provides a valuable stepping stone. Once your mark gains enough public association with your business—a process known as acquiring secondary meaning—you may later apply to move it to the Principal Register. Typically, a mark can argue that it has acquired a secondary meaning and thus distinctiveness after it has been registered for 5 years on the Supplemental Register.
Protections Afforded by the Supplemental Register
The Supplemental Register offers notable benefits and protections for trademarks that otherwise wouldn't gain registration. Some of the benefits and protections afforded are very much similar to those of the Principal Register, including:
- Basis for International Extension/Recognition: Registration on the Supplemental Register can be a basis for seeking to extend that US registration to foreign jurisdictions via the Madrid Protocols.
- Prevent Conflicting Marks: Even though your trademark won't be published for opposition, it will appear on the USPTO database. This means that other businesses searching the database will see your registration, reducing the chances of someone else inadvertently adopting a similar mark. This also means no one else will be able to register a similar trademark for goods/services similar to your own.
- Use of the Registration Symbol: Once a mark is registered on the Supplemental Register, you are legally allowed to use the ® symbol. This communicates to others that your trademark is federally registered and protected under U.S. trademark law.
- Right to Sue: Your trademark will still receive key legal protections, such as the ability to file a lawsuit in federal court if someone infringes on your mark.
Limitations of the Supplemental Register
While the Supplemental Register comes with advantages, it doesn't confer all the benefits of the Principal Register. It is a lesser registration, and for some businesses it is not a viable option. Here are the primary limitations of the Supplemental Register that you need to consider:
- No Protection at U.S. Customs: Marks on the Supplemental Register cannot be submitted to U.S. Customs and Border Protection. This means you won't be able to block the importation of counterfeit goods that infringe on your trademark.
- Not Eligible for Amazon Brand Registry: Many e-commerce businesses rely on platforms like Amazon to sell their products. Unfortunately, trademarks on the Supplemental Register cannot be used to enroll in programs like the Amazon Brand Registry, which allows businesses to better control their listings and protect their brand on the platform.
- Must be "in use": The application must demonstrate that the trademark is already in use in commerce to attain Supplemental Registry status.
Is the Supplemental Register Right for You?
The decision to file on the Supplemental Register depends largely on your trademark and long-term business goals. Here are some scenarios where it might make sense:
- Your Mark Lacks Distinctiveness Now, but Could Gain It Later: If your trademark exists in a more descriptive category (e.g., "Fresh Fruit Delivery"), the Supplemental Register provides a launch pad to establish a legal foundation while you work on building distinctiveness.
- You Want Initial Protections While You Build Your Mark: Registration on the Supplemental Register ensures your trademark shows up in search databases, discourages conflicting trademark applications, and enables you to begin using the ® symbol.
- You Understand the Limitations and Want Future Flexibility: While it doesn't unlock all the benefits of the Principal Register, the protection it provides is often worth the effort. Later, when your trademark achieves distinctiveness, you can apply for the Principal Register.
Next Steps
If you've been denied registration on the Principal Register or if your trademark application faces challenges due to distinctiveness, the Supplemental Register could still provide the federal protection and recognition your business needs.
Trademark law can be complex, and navigating the nuances between the Principal and Supplemental Registers often requires expert guidance. At Dragan Ivetic, Attorney at Law, LLC, our team specializes in trademark protection strategies tailored to your business goals.
Contact us today for a consultation and learn how to maximize your trademark's potential while protecting your brand effectively.
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