In the United States, the two registers on which a trademark may be placed are the Principal Register and the Supplemental Register. Most applications are submitted for protection on the Principal Register. However, in certain instances, an examining attorney may provide an applicant with the option to amend their application to the Supplemental Register in order to overcome a refusal on the Principal Register. But, what rights does a Supplemental Registration afford?

The Principal Register

Marks registered on the Principal Register are deemed distinctive and are afforded all of the protections available under the U.S. Trademark Act. Some of these protections include:

• A legal presumption of the registrant’s ownership and exclusive right to use the mark in relation to the goods/services identified in the registration
• A date of constructive use as of the filing date of the application
• The ability to bring an action concerning the mark in federal court
• The ability to submit the registration to US Customs and Border Protection to prevent the importation of infringing goods
• The use of the US registration as a basis to obtain protection in foreign countries
• The ability to obtain incontestable rights to the registered mark
• Use of the registration symbol ® which puts third parties on notice of the registrant’s rights
• Inclusion of the registration in the USPTO’s database
• Refusal by the examining attorney of any confusingly similar marks submitted by third parties after the registrant’s date of application 

The Supplemental Register

Where a mark is not eligible for protection on the Principal Register but may still be capable of identifying an applicant’s goods/services, registration on the Supplemental Register may be available. An example of when this may occur is where an examining attorney considers a mark to be merely descriptive of the goods/services identified in the application.

Registration on the Supplemental Register provides the following protections:

• Use of the registration symbol ® which puts third parties on notice of the registrant’s rights
• Inclusion of the registration in the USPTO’s database
• Refusal by the examining attorney of any confusingly similar marks submitted by third parties after the registrant’s date of application
• The ability to bring an action concerning the mark in federal court

In short, although registration on the Supplemental Register does not provide the full breadth of protection as registration on the Principal Register does, the Supplemental Register still serves as a means of protection for a mark while it acquires distinctiveness in the marketplace. Further, in most instances, having a registration (albeit a Supplemental Registration) is better than none.

To learn more about amending a trademark application to the Supplemental Register, contact a trademark attorney.

 

 

 

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