Transcript from Tricks of the Trade(mark) podcast episode, listen here.
At the US Patent and Trademark Office, there are actually two different registers of trademarks. Now, they show up together in the same searches, and many people may not be familiar with the details, but there’s actually a principal register of trademarks and what’s called the supplemental register of trademarks. The vast majority of registrations are on the principal register, but it is important to know what the supplemental register is and why it might apply in certain scenarios.
You see, a registration on the supplemental register is of course still registered, but it is a weaker registration, and it is an indication of a weaker trademark, generally. The supplemental register generally applies to descriptive or ornamental trademarks, and what I mean by ornamental is a mark that is used in a manner where it’s not truly indicating the source of a product or service, but it may be used more to convey a message, like on the front of a piece of apparel, or on a sticker, or bumper sticker, or sign, or poster, so it’s not indicating the creator of the shirt itself, in an example, with a phrase… Let’s say the phrase, “Save the whales,” on the front of a t-shirt. Save the whales doesn’t indicate the manufacturer of the t-shirt. It just indicates the manufacturer of that expression on the t-shirts, and that is an ornamental use, and that will generally be on the supplemental register.
A descriptive trademark is a trademark name or phrase that is made up entirely of terms that are descriptive of a feature of the goods or services that it is used with, and those marks are also weaker, and therefore will appear on the supplemental register if they have not acquired distinctiveness. So, registrations that are issued on the supplemental register are admitted by the owner, by the registry, to be weaker, because they have accepted that allowance on the supplemental register. But, they still do have many benefits, not all the benefits of the principal register, but they still get to use the R in the circle ®, and probably the most important benefit in this case is that they still appear in the USPTO’s database when people are searching for conflicts, for potential new names, or when a new application is being reviewed by the USPTO examiner, and they are searching for potential conflicts. Registrations on the supplemental register are also in the database that is being searched.
The owner of a supplemental registration can also still sue in court for trademark infringement, although they won’t have all the same presumptions and benefits that someone who has a registration on the principal register will have. It is important to note that a registration on the supplemental register cannot be amended itself to move to the principal register, but it is possible later on to come back and reapply if the mark has been used for a period of years, generally five or more years, or if it has become distinctive through extensive use and marketing, it may be eligible for registration on the principal register after it was already accepted on the supplemental register.
Generally, in my opinion, a registration on the supplemental register is better than nothing. It’s better than no registration at all, but of course, it is an admission about the mark and the protection being weaker, so applicants and registrants need to be aware of these distinctions and need to be counseled about the important differences in the rights that go with them.
For more on the Supplemental Register, see https://www.erikpelton.com/principal-register-of-trademarks-vs-supplemental-registger/