Unpacking the Growing Influence of the Supplemental Register

It seems like trademarks registered on the Supplemental Register have been viewed as relatively more important in examination lately, and have been cited more frequently since the recognition that the US Register is overcrowded (see Trademark Modernization Act of 2020); reducing the registration of less distinctive registrations has been a focal point in USPTO policies as well.

Trademark protection for brands on the Supplemental Register in the United States plays a unique role in the broader framework of trademark law, and understanding why examiners might be placing more emphasis on it in recent years requires a bit of background on how the trademark registration system works.

Understanding the Supplemental Register

The United States Patent and Trademark Office (USPTO) has two systems of trademark registration: the Principal Register and the Supplemental Register.

1. Principal Register: This is the primary registry for trademarks and provides the most robust form of protection. Trademarks on this register are presumed to be distinctive, either inherently or through acquired distinctiveness (secondary meaning). Registration on the Principal Register grants several benefits, such as the presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.

2. Supplemental Register: This is intended for trademarks that do not qualify for the Principal Register because they lack inherent distinctiveness and have not yet acquired secondary meaning. Marks on the Supplemental Register might be descriptive, surname-based, or geographically descriptive, and thus not registrable on the Principal Register without proof of secondary meaning. The benefits of the Supplemental Register are more limited but still valuable. They include the ability to use the ® symbol, a listing in the USPTO’s records (which can help block the registration of confusingly similar marks), and the potential to become distinctive over time.

A Supplemental Registration is an acknowledgement that the mark is not inherently distinctive, and the mark is not protectable in a cancellation proceeding or in an infringement suit unless and until it acquires distinctiveness through long use Trademark Applications: Pre-filing Considerations.

A mark registered on the Supplemental Register is considered a weaker mark. It does not provide the presumptions of ownership, validity, and right to exclusive use, the availability to record with U.S. Customs, and the ability to file intent-to-use applications and reserve rights to a mark prior to use, which are benefits available to owners of principal registrations § 3.04 Obtaining and Developing Trademark Rights§ 4.05 Obtaining And Developing Trademark Rights.

Moreover, a mark registered on the Supplemental Register is not published for opposition and thus is not subject to the opposition process. The costs for registration on the Supplemental Register are the same as those for registration on the Principal Register. Despite these limitations, registration on the Supplemental Register does allow the trademark owner to use the registration as the basis for filing a foreign trademark application for the mark

Recent Trends and Examiner Emphasis

Recent years have seen a shift where USPTO examiners are placing more weight on the Supplemental Register in blocking new trademark applications. Several factors might contribute to this trend:

1. Increasing Volume of Trademarks: As the number of trademark applications has grown, the likelihood of conflicts between new applications and existing marks has increased. Examiners use both the Principal and Supplemental Registers to check for potential conflicts to protect registered marks from dilution.

2. Protective Measures: By referencing marks on the Supplemental Register, examiners can help prevent the registration of new marks that could potentially dilute the distinctiveness of existing marks, even those not qualified for the Principal Register. This is particularly significant for descriptive marks that may be on their way to acquiring secondary meaning and thus moving to the Principal Register.

3. Legal Strategy and Precedents: Some legal precedents may empower examiners to consider the Supplemental Register more seriously in their evaluations. Trademark attorneys might also be advising clients to register on the Supplemental Register as a defensive measure, especially in industries where descriptive terms are common and strategically important.

4. Market Dynamics: In some sectors, particularly retail and e-commerce, the descriptive nature of a brand can be crucial for consumer recognition. Protection, even if limited on the Supplemental Register, can be a critical factor in competitive markets.

Implications for Trademark Applicants

For trademark applicants, an understanding of the importance of both registers is crucial. Those whose marks are initially only eligible for the Supplemental Register should consider this as a stepping stone to eventual Principal Register registration, once secondary meaning is established. It’s also a reminder of the importance of conducting thorough trademark searches not just against the Principal Register but also the Supplemental Register to assess all potential conflicts before filing.

There is no doubt that Supplemental Registrations are receiving more prominence in office actions, but it's uncertain whether this is due to more trademarks overall (including supplemental registrations) or a greater emphasis on the Supplemental Marks to block suggestive marks. Maybe it's both.

In any event, with the increased importance of a registration on the Supplemental, clients are advised to pursue registrations where reasonable to protect their ability to use terms unique to their industry to accurately describe products, particularly if they have been using the mark for more than five years and can claim acquired distinctiveness under 2f.

The evolving dynamics and the increasing importance of the Supplemental Register reflect the USPTO's commitment to a comprehensive approach to trademark protection, accommodating the nuances of branding strategies while ensuring robust protection against potential infringements.

If you have any question please don't hesitate to contact Nyall Engfield directly at TrademarKraft.

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