The federal law governing trademarks in the United States, the Lanham Act, provides for two separate types of registers for the registration of trademarks with the United States Patent and Trademark Office ("USPTO")—the Principal Register and the Supplemental Register. The Principal Register is the register that is most familiar to both trademark practitioners and trademark holders; however, the less well-known Supplemental Register can afford a place to register a mark that may not be eligible for registration on the Principal Register, particularly when a mark has not acquired the necessary distinctiveness required for the Principal Register. The Lanham Act provides specific requirements for the Supplemental Register, see 15 U.S.C. §§ 1091-1096, and permits a mark, namely those marks considered to be "descriptive," to be registered in instances where the mark is in use in interstate commerce, can potentially identify goods and/or services with a particular source, and/or has not yet acquired distinctiveness at the time of registration. Although the Supplemental Register provides protections to trademark holders, it is important to note that the protections afforded to marks on the Supplemental Register is not as expansive as those on the Principal Register, and there are key differences between the Principal and Supplemental Register that are important to take note of.
Overview of Supplemental Register and Requirements
The Lanham Act has specific requirements for an application requesting registration on the Supplemental Register to be met: (i) the mark must be in use in commerce or in connection with the good or services noted in the application; and (ii) the mark cannot be eligible for registration on the Principal Register. See 15 U.S.C. § 1091; TMEP § 815.01 ("A mark that is clearly eligible for the Principal Register may not be registered in the Supplemental Register."); see also Nazon v. Ghiorse, 119 U.S.P.Q.2d 1178, 1182 (T.T.A.B. 2016). Marks that are registrable on the Supplemental Register include (i) descriptive marks that are capable of acquiring distinctiveness or secondary meaning; (ii) surnames; (iii) geographic terms; or (iv) non-distinctive and non-functional trade dress.
Moreover, if the application requesting registration on the Supplemental Registration is eligible for registration on the Principal Register, the application will be refused. See TMEP § 815.01. If this occurs, the applicant will have to amend its application to the Principal Register. Additionally, if an applicant seeks to register a mark on the Supplemental Register, the application must specifically state that the registration is for the Supplemental Register—if no register is specified on the application, then the USPTO will presume that the applicant intended to seek registration on the Principal Register. See TMEP § 815.
There are several advantages and protections afforded to a mark registered on the Supplemental Register. Although these protections are not as broad as those afforded to marks on the Principal Register, protections include: (i) the trademark owner can use a notice of federal trademark registration, such as the "®" symbol; (ii) the owner may bring a suit in federal court for trademark infringement, as well as a claim for unfair competition, if applicable; (iii) the mark may be cited by an Examining Attorney against a later-filed application that seeks to register a confusingly similar mark for related goods and/or services under Section 2(d) of the Lanham Act, including an application seeking registration on the Principal Register; and (iv) the registration may serve as the basis for filing the mark in a foreign country. Furthermore, a registration on the Supplemental Registration may be used to prove exclusive use of a mark over a five-year period, which is one of the requirements for proving distinctiveness for registration on the Principal Register.
Furthermore, because the Supplemental Register is limited to marks that are in use, an application under Section 1(b), an intent-to-use application, is not eligible for protection on the Supplemental Register. An application can be amended to the Supplemental Register only after an allegation of use is filed and accepted by the USPTO. However, it is important to note that amending an intent-to-use application to the Supplemental Register will change the priority date of the application—in other words, the USPTO will consider the date of the amendment to allege use to be the effective filing date under 37 C.F.R. § 2.75(b). See also TMEP § 815.02. The risk with the change in priority date is that the Examining Attorney will have to conduct a new search for conflicting marks, and there may be other applications that have been filed between the original priority date and the amendment alleging use. Although this may be a necessary step, it is a consideration and potential risk that should be acknowledged. Additionally, failure to allege use will result in a refusal by the Examining Attorney; however, the refusal may be withdrawn if the applicant submits an acceptable allegation of use. TMEP § 815.02.
Moreover, for applications filed under Section 66(a), these applications cannot be amended to the Supplemental Register. See TMEP § 816.01.
Generally, applications for the Supplemental Register materialize through an amendment to an application filed on the Principal Register. Alternatively, a trademark holder may initially file on the Supplemental Register if the applicant believes the mark is descriptive but may become distinctive or acquire secondary meaning through use. Importantly, the Trademark Manual of Examining Procedure and the Lanham Act both note that the registration of a mark on the Supplemental Register "does not constitute an admission that the mark has not acquired distinctiveness." See TMEP § 815.03; 15 U.S.C. § 1095.
Once a mark is approved for registration, the record will note that the mark has been "Allowed for Supplemental Registration," rather than note that mark has been approved for publication.
Key differences between the Principal and Supplemental Registers
There are a number of key differences between registration on the Principal Register and the Supplemental Register, including the scope of protection afforded to the mark on each Register. The scope of protection afforded by the Principal Register is broader and includes the additional protections, as well as those discussed supra for marks on the Supplemental Register:
(i) the registration serves as prima facie evidence of the registrant's exclusive right to use the mark, that the mark is valid, and that the registrant is the owner of the mark, see 15 U.S.C. § 1057(b) and (c); (ii) the ability to record the mark with U.S. Customs and Border Protection to stop the importation of infringing or counterfeit goods into the United States, see 15 U.S.C. § 1124; (iii) the registrant may be able to obtain increased statutory damages, see 15 U.S.C. § 1127; and (iv) the possibility of that the mark may become incontestable after five years of registration, see 15 U.S.C. § 1065.
Furthermore, as discussed supra, a mark must be distinctive in order to be eligible for registration on the Principal Register—this can be accomplished by either the uniqueness of the mark or long and exclusive use of the mark. Additionally, although a mark on the Supplemental Register is not subject to the opposition period for marks on the Principal Register, see 15 U.S.C. §1063, marks on the Supplemental Register are subject to cancellation. See 15 U.S.C. §§ 1064, 1092; TMEP § 815.
Notably, a mark registered on the Supplemental Register will never achieve incontestability, and any request for incontestability will be rejected by the USPTO.1 Marks on the Principal Register may be eligible for incontestability after five years of consecutive use from the date of the registration of the mark. Because of this, there is a risk that a third party can move at any time to cancel a registration on the Supplemental Register during the life of the mark if the third party is able to show (i) earlier use of a confusingly similar mark; (ii) demonstrate cause for superior rights; or (iii) any other applicable grounds for cancellation.
Subsequent Registration on the Principal Register
A trademark owner may decide to amend or move a registration on the Supplemental Register to the Principal Register, if the necessary requirements are met. A new application must be filed for the mark in order to secure registration on the Principal Register. As part of this application, the applicant can note that it owns a registration on the Supplemental Register and may also submit evidence to establish that the mark has acquired distinctiveness. Although continuous use of the mark for at least five years may be considered evidence of acquired distinctiveness, an Examining Attorney will likely request additional evidence to demonstrate distinctiveness, including evidence of fame or notoriety of the mark; advertising of the mark; and/or declarations from third parties that demonstrate the mark has become well-known and associated with the goods or services of the applicant/registrant. This evidence is essential for the mark to be approved for publication on the Principal Register.
Additionally, a registration on the Supplemental Registration must be maintained, and registrants will generally file a Section 8 declaration of use between the fifth and sixth year of the registration. Registrants may choose to concurrently file this declaration at the same time as filing a new application for the mark on the Principal Register. Filing this concurrently helps to continue the protection for the registrant on the Supplemental Register during the pendency of its application for the mark on the Principal Register. If the registrant/applicant's mark is approved for publication on the Principal Register, the trademark owner may then choose to allow its mark on the Supplemental Register to lapse, which generally occurs on the tenth anniversary of the registration, or can choose to file a request for an express abandonment with the USPTO.
1 As a note, a request for incontestability under Section 15 of the Lanham Act is typically made between the fifth and sixth year from the date of registration and generally includes a declaration showing use—this protection is only available to marks on the Principal Register.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.