A supplemental trademark refers to a mark registered on the U.S. Patent and Trademark Office's (USPTO) Supplemental Register, offering limited legal protection for terms that are not yet distinctive enough to qualify for the Principal Register.
Understanding the Supplemental Register
The Supplemental Register is a secondary register maintained by the USPTO, distinct from the Principal Register. It primarily consists of marks that do not qualify for the Principal Register, usually because they are descriptive, geographically descriptive, or a surname, and therefore are non-distinctive. In essence, consumers do not yet associate these terms with a specific source (i.e., they lack secondary meaning), which prevents them from immediate registration on the Principal Register.
This register serves as a transitional space for marks that have the potential to become distinctive over time through continued use and marketing efforts.
Key Characteristics and Purpose
Marks on the Supplemental Register receive limited trademark rights and benefits compared to those on the Principal Register. Its primary purpose is to allow applicants to reserve a mark while they work to establish its distinctiveness in the marketplace.
Comparison: Supplemental vs. Principal Register
Understanding the differences between the two registers clarifies the nature of a supplemental trademark:
| Feature | Supplemental Register | Principal Register |
|---|---|---|
| Distinctiveness Status | Descriptive, non-distinctive (lacks secondary meaning) | Inherently distinctive or acquired distinctiveness |
| Legal Presumption | No presumption of validity or ownership | Prima facie evidence of validity and ownership |
| Incontestability | Not eligible | Eligible after five years of continuous use |
| Enforcement | More challenging; generally requires proving secondary meaning | Stronger enforcement in federal courts |
| International Rights | Basis for foreign applications (e.g., Madrid Protocol) | Basis for foreign applications |
| ® Symbol Use | Permitted once registered | Permitted once registered |
| Customs Protection | May be eligible for U.S. Customs and Border Protection registration | Eligible for U.S. Customs and Border Protection registration |
Benefits of Supplemental Registration
Despite its limitations, registering a mark on the Supplemental Register offers several strategic advantages:
- Public Notice: It places the mark in the USPTO database, providing public notice of your claim to the mark. This helps deter others from adopting similar marks.
- Right to Use ® Symbol: Once registered, you gain the right to use the federal registration symbol (®), which indicates federal registration and serves as a warning to potential infringers.
- Basis for International Applications: A U.S. supplemental registration can serve as a "basis" for applying for trademark registration in other countries under international treaties like the Madrid Protocol.
- Protection Against Registration of Confusingly Similar Marks: While not as strong as Principal Register marks, a supplemental registration may be cited by a USPTO examiner against a later-filed application for a confusingly similar mark.
- Potential Path to Principal Register: It keeps the door open for moving the mark to the Principal Register once it has acquired "secondary meaning."
- Customs Registration: A supplemental registration can be recorded with U.S. Customs and Border Protection to help prevent the importation of infringing goods.
Limitations and Challenges
It's important to be aware of the drawbacks associated with supplemental registration:
- No Presumption of Validity: Unlike Principal Register marks, a supplemental registration does not automatically provide a legal presumption of validity, ownership, or exclusive right to use. You may still need to prove these in court.
- Difficult Enforcement: Enforcing rights against infringers can be more challenging, as you often need to prove that your mark has acquired secondary meaning in the minds of consumers.
- No Incontestability: Supplemental registrations are not eligible for "incontestability," a powerful legal status available to Principal Register marks after five years of continuous use, which makes them virtually immune to challenges.
- Limited Defensive Power: It provides less protection against others registering similar marks on the Principal Register, especially if they can argue their mark is inherently distinctive.
The Path to the Principal Register
Many applicants view the Supplemental Register as a stepping stone. If a mark initially registered on the Supplemental Register eventually acquires secondary meaning—meaning consumers have come to associate the descriptive term exclusively with a single source—the owner can then file a new application to register the mark on the Principal Register.
To demonstrate secondary meaning, an applicant typically needs to provide evidence such as:
- Years of continuous and exclusive use of the mark.
- Extensive advertising and marketing expenditures.
- Sales volume and market share.
- Consumer surveys and testimonials.
Examples of Marks That May Be on the Supplemental Register
- "Speedy Delivery" for a courier service: Initially descriptive, it lacks distinctiveness unless the company can prove consumers associate "Speedy Delivery" solely with their service.
- "Delicious Coffee" for a coffee shop: This phrase is merely laudatory and descriptive of coffee.
- A surname used as a brand, e.g., "Smith's Bakery": Surnames are generally considered non-distinctive unless they acquire secondary meaning, distinguishing them from other "Smiths."
- A geographically descriptive term, e.g., "Texas BBQ Sauce": If the sauce originates from Texas, the name is geographically descriptive and would need to prove secondary meaning to appear on the Principal Register.
Registering a mark on the Supplemental Register is a strategic choice for businesses with descriptive or non-distinctive marks, allowing them to gain some protection and work towards full federal trademark rights.
