The United States Patent and Trademark Office (USPTO) will not grant full registration to certain types of trademarks that are overly descriptive of the goods or services that the mark represents. These include generic and descriptive marks, last names, geographic locations, and less common types of marks including product designs, trade dress, and sound marks.
However, some of these marks can still be afforded a secondary level of trademark registration on the Supplemental Register. Essentially, the Supplemental Register is available for trademarks that do not meet the requirements of distinctiveness, meaning that they are not inherently distinctive or have not yet acquired distinctiveness through use in commerce. The Supplemental Register will give you certain rights, but it is not a substitute for the Principal Register. Instead, it can serve as a stepping stone to later achieving full trademark protection on the Principal Register.
Examples of trademarks that may be registered on the Supplemental Register include:
- Descriptive marks that describe a quality, feature, function, or characteristic of the goods or services, such as “soft” for pillows or “fast” for delivery services.
- Surnames that are not uncommon or have not acquired distinctiveness as a trademark, such as “Smith” for plumbing services or “Lee” for clothing.
- Geographic terms that are not distinctive or have not acquired distinctiveness as a trademark, such as “Paris” for perfume or “California” for wine.
- Shape or configuration marks that are not distinctive or have not acquired distinctiveness as a trademark, such as a rectangular bottle for water or a circular logo for a pizza chain.
Benefits of the Supplemental Register
Registering your trademark on the Supplemental Register provides several notable benefits:
- Putting others on notice of your claim of ownership and use of the mark, which may deter potential infringers or competitors from adopting a similar mark.
- Giving you the right to use the federal registration symbol ® with your mark, which may enhance your reputation and credibility in the market.
- Giving you the ability to sue for trademark infringement in federal court and to seek certain remedies, such as injunctions, damages, and attorney’s fees.
- Giving you the basis to register your mark in foreign countries that recognize the Supplemental Register, which may expand your global reach and protection.
- Giving you the opportunity to later apply for registration on the Principal Register, if you can show that your mark has acquired distinctiveness through use in commerce.
Limitations of the Supplemental Register
Registering your trademark on the Supplemental Register is a valuable option for protecting your mark and building your brand, especially if your mark is not eligible for the Principal Register. However, you should also be aware of the limitations and disadvantages of the Supplemental Register:
- Not having the presumption of validity, ownership, and exclusivity of your mark, which means that you may have to prove these elements in court if you sue for infringement or defend against a cancellation.
- Not having the benefit of constructive notice and nationwide priority of your mark, which means that you may have to prove your actual use and reputation of your mark in each geographic area where you seek to enforce your rights.
- Not having the ability to prevent the importation of infringing goods by recording your mark with the U.S. Customs and Border Protection.
- Not having the ability to claim incontestability of your mark, which means that your mark may be challenged on various grounds, such as descriptiveness, how generic it is, or functionality.
How to Work with the USPTO to Gain Supplemental Registration and Later Obtain Principal Registration for Your Mark
Typically, you would not want to directly apply to the Supplemental Register. Instead, best practice is to apply for registration on the Principal Register first. Then if the Examiner believes your mark is too descriptive, they may offer you the opportunity to amend to the Supplemental Register. If you do not believe you can overcome the descriptiveness refusal, then the Supplemental Register may be the right choice.
After five years of continuous use (or earlier if you think you can prove secondary meaning) you can apply for registration on the Principal Register. This requires filing a new application for your trademark and making the claim that your mark has acquired distinctiveness through use in commerce. You may need to submit evidence of your continuous and exclusive use of the mark for at least five years, as well as other factors that may show that your mark has become distinctive, such as consumer surveys, advertising expenditures, media coverage, or third-party recognition. The USPTO will examine your new application and publish it for opposition, and if no opposition is filed (or sustained), your mark will be registered on the Principal Register.
Trademark Protection and Enforcement
If you are interested in trademark protection for your business, need assistance with enforcement against an infringer, or need help defending your use of a term, please contact KJK Intellectual Property & Technology partner Scott Brown at SGB@kjk.com or by phone at 614.427.5752.