The Supplemental Register is provided by the United States Patent and Trademark Office (USPTO) as a way to federally register certain types of US trademarks. Although it doesn’t offer all of the benefits and protections of the Principal Register, it’s still a valuable tool that should be utilized under appropriate circumstances.
The USPTO maintains two separate trademark registers. The Principal Register is reserved for trademarks that are considered “distinctive.” On the other hand, the Supplemental Register is for trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers.
The Supplemental Register is for Non-Distinctive Marks
There are many types of trademarks that may only be eligible for registration on the Supplemental Register. I will refer to these types of trademarks as “non-distinctive marks.” The following are some very common examples of non-distinctive marks:
- Marks that are merely descriptive of the products/services with which they’re used
- Marks that are primarily geographically descriptive of the products/services with which they’re used
- Marks that are deceptively misdescriptive of the products/services with which they’re used
- Marks that are primarily merely surnames
Use of a Non-Distinctive Mark for Five Years
Now, let’s say that your trademark falls into one of the categories noted above. Although your non-distinctive mark would typically be eligible for registration only on the Supplemental Register, you still may be able to register it on the Principal Register if you can prove to the satisfaction of the USPTO that your non-distinctive mark has, in fact, acquired distinctiveness in the minds of consumers. The good news is that if the use of your non-distinctive mark has been “substantially exclusive and continuous” for at least the previous five years, then there is an automatic presumption that your non-distinctive mark has acquired the requisite distinctiveness for registration on the Principal Register. I’d say that in about 80% of cases, the USPTO approves a non-distinctive mark for registration on the Principal Register if the five years of substantially exclusive and continuous use requirement has been met.
How About Less Than Five Years of Use?
What if you’ve been using your non-distinctive mark for less than five years? Well, you have the option of presenting actual evidence to the trademark examining attorney demonstrating that your non-distinctive mark has, in fact, acquired distinctiveness. Such evidence could include the following:
- Sales figures
- Advertising expenditures
- Customer declarations
- Unsolicited media coverage
- Market surveys
If the information, materials, and other data you provide convinces the trademark examining attorney that your non-distinctive mark has acquired distinctiveness in the minds of consumers, then your mark will be approved for registration on the Principal Register. Conversely, if the trademark examining attorney believes that your evidence is inadequate and unpersuasive, then registration on the Supplemental Register may be your only viable option. Once you have five years of substantially exclusive and continuous use of your non-distinctive mark, you may file a new trademark application to seek registration of your mark on the Principal Register.
The Supplemental Register Generally Requires Use in Commerce
One important thing to keep in mind is that registration of a non-distinctive mark on the Supplemental Register requires that either (1) the mark be in use in commerce in the United States, or (2) the mark be eligible for registration under Section 44(e). A trademark application filed under Section 1(b) (intent to use) cannot be amended to seek registration of the mark on the Supplemental Register until there’s use of the mark in commerce and an acceptable Amendment to Allege Use is filed with the USPTO.
Questions About the Supplemental Register?
I’m experienced US trademark attorney Morris Turek. If you have questions about the Supplemental Register, or want to know whether your particular trademark might only be eligible for registration on the Supplemental Register, please don’t hesitate to contact me. I may be reached at email@example.com, by phone at (314) 749-4059, or through the contact form located at the bottom of this page. I look forward to speaking with you soon.