When one door closes another opens…

So, you’ve received a rejection on your trademark application stating that the mark is descriptive.  You can try to overcome the rejection, but if you’re unsuccessful, one option may be to move the mark to the supplemental register.

“Since the enactment of the law in 1946, the Supplemental Register (Lanham Act Sections 23-28, 15 U.S.C. §§ 1091-1096) has afforded a place to register a mark that is inherently descriptive but that can potentially identify goods or services with a source. The names of new magazines, which typically are descriptive of the contents of the magazine, are a good example of marks that are registered on the Supplemental Register.”

Gurfinkel, Daniel M. “The U.S. Trademark Registers: Supplemental vs. Principal.” Trademark Symbols, 21 May 2012, Website

What’s the difference between Principal and Supplemental Registration?

The USPTO has two registers for trademarks: principal and supplemental.  Supplemental registration is reserved for marks that do not qualify for the principal register, namely descriptive marks.  Moving your mark to the supplemental register is a simple election, but, before proceeding, you need to understand exactly what that means. 

Being on the supplemental register does mean that you are federally registered, and you could use the (R) next to your mark.  This also means that people could search the federal USPTO database and see your mark.  This would also mean that confusingly similar marks wouldn’t be allowed to be registered, at least with the USTPO.  

Trademark registration can be difficult

The main deterrents to supplemental registration are that it doesn’t give you exclusive rights to the mark and there wouldn’t be the same presumption of validity as marks on the principal register. That means that if you sued someone in federal court for trademark infringement, you would first have to prove the mark was valid and distinct even though you have a federal trademark. 

Can I ever file the principal register?

The owner of a mark on the supplemental register can try and get a mark off the supplemental register and on the principal register if it has acquired distinctiveness.  This would require a new filing to the principal register.  After five years of use, it may be possible to get on the principal register, but that can be a pretty difficult and expensive process to show the mark has acquired distinctiveness.

It is very important to understand both registers when applying for a trademark and responding to an office action.  You should always try to get on the principal register, but if that fails, being on the supplemental register may be suitable for your needs.

[Read: Trademark Office Action]

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