Hey Supplemental Register, What's Your Deal?
The United States Patent and Trademark Office’s (“USPTO”) supplemental register reminds me of the odd relative every family seems to have. Essentially, the supplemental register is like your perpetually drunk uncle or aggressively new age aunt. They show up at Thanksgiving, and you think to yourself, why are you even here?
The supplemental register is weird because it is a register for marks that are not really marks at all. The Lanham Act states that “[a]ll marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … which are in lawful use in commerce … may be registered on the supplemental register.” 15 U.S.C. § 1091. So let me get this straight—marks that do not actually distinguish goods or services but that might one day be able to do so can be registered? Isn’t that just a way of registering a potential mark? Strange.
Why Does the Supplemental Register Exist?
It’s a valid question. Why does the United States have a register dedicated to terms that are not actually trademarks because they lack distinctiveness? The short answer is that the register was created to help U.S. trademark owners register their trademarks in other countries way back when a foreign countries required proof of registration in the U.S. (and when such non-distinctive matter was capable of being registered in foreign countries).
The supplemental register was established by Section 23 of the Lanham Act (15 U.S.C. § 1091) in 1946. However, as the statute states, the supplemental register is “a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920.” 15 U.S.C. § 1091(a). Ahh, so this whole supplemental register mess goes all the way back to 1920. The legislative history of the Trademark Act of 1920 explains the rationale:
The legislation has no effect on domestic rights of any one. It is simply for the purpose of enabling manufacturers to register their trade-marks in this country for the purpose of complying with legislation in foreign countries, which necessitates registration in the United States as a necessary preliminary for such foreign registration.
Although the supplemental register still exists today, the original purpose behind its creation arguably doesn’t. The vast majority of countries do not require proof of registration for foreign applicants, which includes all the important countries or jurisdictions you would care about. And foreign countries examine trademark applications to make sure they are distinctive, so non-distinctive U.S. marks are likely to be rejected despite being registered on the supplemental register.
Regardless, this is how we came to have a federal register for trademarks that are not really trademarks.
The Benefits of Owning a Supplemental Registration As Opposed to Not Owning Any Registration
No one is going to dispute that, given the choice, you’d rather have your trademark registered on the principal register rather than the supplemental register. But a supplemental registration is much more than just a consolation prize. There are some real benefits to having a supplemental registration as compared to having no registration at all.
Use of the Registration Symbol
This is a nice one. If you have a supplemental registration, you can use the ® symbol. And unless someone checks, they won’t know that it’s just on the supplemental register.
Can Be Cited Against Subsequent Applications
This is a pretty big benefit. Trademarks that are registered on the supplemental register appear in the USPTO’s trademark database and USPTO examining attorneys can cite your trademark against a subsequent trademark application for a confusingly similar mark—even if that mark seeks registration on the principal register!
Helpful When Enforcing Your Rights
A supplemental registration is useful in trying to enforce your trademark rights. This is especially true when you are dealing with unsophisticated parties or parties who are not well versed in trademark law (i.e., they don’t know what the heck the supplemental register is). You can send cease and desist letters to potential infringers citing your trademark registration. You can try to point to your trademark registration when trying to resolve a trademark dispute relating to a domain name, social media account, etc. Let them figure out that your registration is on the supplemental register and let them argue that your mark may lack distinctiveness and may not even qualify as a mark under trademark law.
Allows You to Obtain Remedies
This is another biggie. Assuming that you prevail in showing that you have a valid trademark, the supplemental registration entitles the owner to the remedies set out in the Lanham Act—15 U.S.C. § 1114 through 15 U.S.C. § 1122.
Confers Jurisdiction and Standing
Some courts and legal experts argue that a benefit of a supplemental registration is the fact that federal courts have jurisdiction to enforce the mark and it provides the owner with standing in an opposition proceeding. While this is true, it seems overblown as a benefit because, if a trademark owner is using its mark in interstate commerce, such common law use will confer jurisdiction and standing.
Benefits Not Afforded to Supplemental Registrations
To me, there is a difference between a disadvantage in owning a supplemental registration (like the admission that the mark is not distinctive) and a supplemental registration not being afforded certain benefits. Below is a list of some of the benefits of a principal registration that are not afforded to a supplemental registration.
A Supplemental Registration Is Not Evidence of Validity or Ownership
Unlike a principal registration, a supplemental registration is not prima facie evidence of the validity, ownership, or the exclusive right to use a trademark. In fact, it is only evidence that a registration was issued. In this regard, I prevailed in an opposition proceeding on these specific grounds in Otter Products v. BaseOneLabs LLC (see the Board’s analysis starting on page 6).
Can’t File an Application Based on Intent to Use
While you can file a trademark application seeking registration on the principal register on an intent-to-use basis, you cannot file a trademark application seeking registration on the supplemental register on an intent-to-use basis. The mark has to be in use in interstate commerce in order to be registered on the supplemental register.
A Supplemental Registration Cannot Become Incontestable
There are many benefits to owning an incontestable trademark, which occurs after filing a Section 15 affidavit after a trademark has been registered on the principal register for five years. (I’m not going to go into all the benefits of an incontestable trademark right now—future evergreen blog post anyone?) But a trademark registered on the supplemental register is not eligible to become incontestable. 15 U.S.C. § 1065; TMEP § 1605.01.
Can’t Stop Counterfeiters From Importing
A supplemental registration cannot be recorded with the U.S. Bureau of Customs and Border Protection to stop the importation of counterfeit goods. In fact, 15 U.S.C. § 1096 specifically states
Registration on the supplemental register or under the Act of March 19, 1920, shall not be filed in the Department of the Treasury or be used to stop importations.
Inability to File a TEAS Plus Application
At the time of this post, a trademark application filed through the USPTO’s Trademark Electronic Application System (TEAS) Plus is only $225, which is $50 less than a TEAS Reduced Fee (RF) application, and $100 less than a TEAS Regular application. However, there are certain requirements that must be met to file a TEAS Plus application, and a TEAS Plus application cannot be filed to register a mark on the Supplemental Register.
The Drawback of Owning a Supplemental Registration
Generally speaking, owning a supplemental registration is better than not owning a trademark registration at all even if you don’t get all the benefits afforded to a principal registration. But … there is one possible drawback.
A Supplemental Registration Can Be Considered an Admission of Descriptiveness
A few courts and the Trademark Trial and Appeal Board (“TTAB”) have held that a supplemental registration constitutes an admission that the mark was descriptive at the time of registration. To be fair, the TTAB takes this position more than federal courts do. However, it does appear that this admission is not binding or conclusive and that federal courts and the TTAB can come to their own conclusion on the issue.
Of course, it is odd that any court or the TTAB has taken the position that a supplemental registration can constitute an admission in light of the language of 15 U.S.C. § 1095, which specifically states
Registration of a mark on the supplemental register, or under the Act of March 19, 1920, shall not preclude registration by the registrant on the principal register established by this chapter. Registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness.
It appears clear that a supplemental registration really should not be an admission in light of the statutory language. I tend to discount this disadvantage because a proper advocate should be able to persuade a court or the TTAB that a supplemental registration cannot be considered an admission. Moreover, the owner of a supplemental registration is not precluded from submitting additional evidence in a federal lawsuit or TTAB proceeding to try to prove that the mark is truly suggestive or that it has since acquired distinctiveness.
Conclusion: Better Than Nothing
The supplemental register does not make a whole lot of sense but it’s not going anywhere—at least not anytime in the near future. What’s more likely is that certain tweaks are made like allowing a party to oppose a trademark application on the supplemental register or reconsidering whether a supplemental registration can be cited against an application on the principal register. But there’s no indication that tweaks are on the horizon either.
It may seem obvious but a supplemental trademark registration is better than no registration at all. So if you file a trademark application for registration on the principal register and it gets rejected for being descriptive and you are using the mark, go ahead and amend to the supplemental register (after trying to overcome the refusal at least once). Then when your mark has acquired distinctiveness, try to file a trademark application on the principal register asserting acquired distinctiveness under § 2(f). Alternatively, choose and adopt a distinctive mark to begin with.