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A quick review of the Supplemental Trademark Register

A quick review of the Supplemental Trademark Register

The Supplemental Trademark Register is for marks that are in commercial inter-state use, but not (yet) qualified to be placed on the Principal Register because they are "descriptive". A mark placed on the Supplemental Trademark Register can qualify for the principal register later on if it obtains a secondary meaning or distinctiveness i.e., if the mark becomes associated in

the mind of the public with the goods or services with which they are used. While the mark is on the Supplemental Register, the applicant works to give the mark secondary meaning through advertising and marketing.

Descriptive marks, surnames and geographical marks may qualify for the Supplemental register. Remember, a mark must be in use to be placed on the Supplemental Register, so an Allegation to Allege Use must have been filed.

Placing a mark on the Supplemental Register is very useful if it runs into "merely descriptive" rejections during examination. It is a very easy process and provides many of the protections that the Principal Register provides.

A Supplemental Registration cannot be converted into a Principal Registration. Such

conversion used to be allowed after a certain amount of time of exclusive use, however, these days the owner of the Supplemental Registration must file a new application to place

the mark on the Principal Registration. If the trademark owner has used the mark

sufficiently that it has acquired secondary meaning, the mark will be granted a Principal


Registration on the Supplemental Register provides many of the same benefits of the Principal Register, including the following:

1. Notice to the public that the mark is being claimed by the applicant for indicating

the source of specific goods or services.

2. Use of the ® symbol.

3. Jurisdiction in Federal District Courts for claims of trademark infringement and

unfair competition, and the possibility of recovering monetary awards. This

includes infringer's profits, damages and costs, and in some cases, trebled damages

and attorney's fees.

4. The mark is on file with the USPTO and can be cited by the USPTO against a

later application by a third party to register a confusingly similar mark on the

Principal Register.

5. The applicant can subsequently reapply under a new application to have the mark

registered on the Principal Register. This usually requires showing that the mark

has acquired secondary meaning in the eyes of the general public once the mark

has been in use at least five years.

The Supplemental Register provides a lot of useful protection, but not as much as the Principal Register. It does not convey the same presumption of validity, and it cannot be used to prevent the importation of infringing products. Also, unlike registration on the Principal Register, the mark cannot be given incontestable status after five years of continuous use. With a Primary Register trademark you have more access to damages including "statutory damages" and can seek attorney fees up to about $200,000; but you can't do that with a supplemental registration.

Adam W. Bell, BSc. PhD. JD.

Bell IP Law

San Francisco, California 94127

Tel:  (415)-752-4085

LinkedIn:Adam Bell

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