What does a registration on the Supplemental Register mean?
Did you know that there are actually two different USPTO registers on which you can obtain a federal trademark registration? By default, the Principal Register is what nearly every applicant seeks in a typical trademark application. Either register will give you a federal trademark registration, but the Supplemental Register (SR) does not include certain advantages and legal presumptions affored by the Principal. Let’s delve into the considerations of whether or not to amend from the Principal to the Supplemental Register.
What are the benefits of a Supplemental Register registration?
At the outset, a registration on the SR will still give you a federal registration and the right to use the circle R symbol. Practically speaking, consumers who see your mark with the circle R symbol will not be able to tell whether your mark is registered on the Supplemental or Principal Register.
Perhaps, the biggest benefit of a Supplemental registration is blocking subsequent applicants from registering similar trademarks. Without any additional cost or effort, the USPTO effectively becomes your trademark police by rejecting subsequently filed trademark applications for similar marks covering related goods or services. You basically gain an ally in the form of USPTO trademark examiners who will block others from registering confusable marks. Instead of paying for trademark monitor services, the burden is shifted to applicants of rejected applciations who will have to argue that their mark is not confusable with yours.
One procedural advantage of an application for the Supplemental Register is that it cannot be opposed. Trademark applications for the SR are not published for opposition.
What are Supplemental Register drawbacks?
By agreeing to register on the Supplemental, you are making an admission that your mark is merely descriptive as of the registration date. Basically, you are acknowledging that your mark is not yet an indicator of source. Such an admission might come back and bite you later when you seek to show that the mark is not merely descriptive.
If and when you wish to file for the same mark on the Principal Register, be prepared for an uphill battle. You will most likely need to submit a Section 2(f) claim with the initial filing of your application along with evidence that the mark has acquired distinctiveness.
If and when you ever need to use your Supplemental Register mark to challenge someone else’s trademark rights, you will need to show that your mark has acquired secondary meaning (acquired distinctiveness) before the priority date of the other trademark.
Should you argue that your mark is not merely descriptive?
In view of potential disadvantages of registration on the SR, you should carefully weigh the probability and cost of responding to merely descriptive refusal. If you can show that your mark is not merely descriptive, you avoid the burden of having to show secondary meaning in the future.
Ideally, you want to go on the PR. At the same, an SR registration might be better than no registration.
If your budget allows for it, one option may be to first argue for the PR. If that fails, then go for the SR.
Can you amend an ITU application from PR to SR?
The Supplemental option is not available for Intent-To-Use (ITU) applications. You must first file an amendment to allege use before amending to the Supplemental.
Need help with a merely descriptive trademark refusal or amending to the Supplemental?
Email patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help register your trademark wisely.
