In the United States, the Supplemental Register is a significant facet of trademark law, offering an alternative route for registering marks that do not initially qualify for the Principal Register. Established under the Lanham Act, the Supplemental Register is specifically designed for trademarks that are not inherently distinctive but are capable of acquiring distinctiveness over time. Understanding the nuances of the Supplemental Register is crucial for trademark owners who wish to secure some level of legal protection for their marks, even when those marks are not eligible for the more prestigious Principal Register.
The Supplemental Register is primarily intended for descriptive marks, as well as surnames and geographical terms that are used in a trademark context. These types of marks are generally not eligible for the Principal Register because they lack inherent distinctiveness. Inherent distinctiveness is a key criterion for the Principal Register, where marks must be distinctive either naturally (fanciful, arbitrary, or suggestive marks) or through acquired distinctiveness (secondary meaning). However, marks on the Supplemental Register can still be protected to a certain extent under federal law.
Registration on the Supplemental Register offers several benefits. It allows the trademark owner to use the federal registration symbol (®), which can act as a deterrent to potential infringers. It also enables the trademark owner to bring a federal lawsuit for infringement if needed. Moreover, registration on the Supplemental Register can be used as evidence of the owner’s exclusive right to use the mark in commerce for the goods and services listed in the registration, though it does not provide the presumption of ownership or the presumption of the right to use the mark exclusively that the Principal Register does.
Another significant advantage of the Supplemental Register is that it can serve as a stepping stone to the Principal Register. A mark registered on the Supplemental Register for five years may become eligible for the Principal Register on the grounds of acquired distinctiveness. This period allows the trademark owner to build up evidence that in the minds of consumers, the mark has come to signify the source of the goods or services, rather than just a description of them.
However, there are limitations to the protection afforded by the Supplemental Register. Marks on this register are not given the same legal presumptions of ownership and exclusive right to use that come with the Principal Register. Additionally, the registration of a mark on the Supplemental Register does not provide a basis for an opposition or cancellation proceeding against other marks, nor can it be used to block the importation of goods bearing an infringing mark.
The process of applying for registration on the Supplemental Register is similar to that for the Principal Register, involving an examination by the United States Patent and Trademark Office (USPTO). If a mark is initially filed for the Principal Register but is deemed ineligible due to lack of distinctiveness, the applicant may amend the application to seek registration on the Supplemental Register instead.
In conclusion, the Supplemental Register provides an important avenue for protecting certain types of trademarks in the United States. It offers several benefits for trademark owners, including federal recognition and the ability to bring infringement lawsuits in federal court. While it does not afford the same level of protection as the Principal Register, it can be a valuable tool for marks that are developing distinctiveness. For businesses and trademark professionals, understanding and utilizing the Supplemental Register can be an effective strategy in a comprehensive approach to trademark protection and brand management.