What types of trademarks appear on the Supplemental?

17 June, 2024
Nyall Engfield

What types of trademarks appear on the Supplemental?

The Supplemental Register exists to provide some level of trademark protection for marks that do not meet the distinctiveness requirements for the Principal Register. It was created by the Trademark Act of 1946, also known as the Lanham Act.

Key points about the Supplemental Register:

Purpose: It provides limited trademark rights and benefits for marks that are descriptive, surnames, or primarily geographically descriptive, which do not qualify for the Principal Register due to lack of inherent distinctiveness
Creation: The Supplemental Register was established by the Trademark Act of 1946 (Lanham Act), which is the primary federal trademark statute in the United States
Legal benefits: Registration on the Supplemental Register allows the use of the ® symbol, the ability to file trademark infringement lawsuits in federal court, and the potential to prevent registration of confusingly similar marks
Limitations: Marks on the Supplemental Register are presumed to be non-distinct and do not enjoy the same legal presumptions of validity and ownership as marks on the Principal Register
Path to Principal Register: Descriptive marks registered on the Supplemental Register can later be registered on the Principal Register once they have acquired distinctiveness (secondary meaning) through extensive use in commerce.

Examples of Trademarks that appear on the Supplemental

Some examples of trademarks that are typically placed on the Supplemental Register include:

Descriptive marks that describe the quality, characteristics, functions, features, purpose, or use of the goods/services

Examples:
SMOOTH for ice cream, describing the texture
DOLLAR SHAVE CLUB for shaving services, describing the price point

Geographically descriptive marks that identify the location or origin of the goods/services

Examples:
BANK OF AMERICA (geographic)
JERSEY blue crabs, MAINE lobster, FLORIDA oranges, CALIFORNIA raisins, NAPA VALLEY wines, JAMAICAN Rum, CUBAN Cigars (identifying location of origin rather than brand)

Surnames or last names

Examples:
LOWE'S (surname)
SMITH for sunglasses (surname)

Marks that are not inherently distinctive but may acquire distinctiveness over time through extensive use and consumer recognition (secondary meaning)

Examples of marks that started on the Supplemental Register but later acquired distinctiveness:
BEST BUY
TEXAS INSTRUMENTS
5 HOUR ENERGY
HOTELS.COM
Non-distinctive shapes, colors, or trade dress

Famous Brands that Started on the Supplemental

There are several well-known brands that started on the Supplemental Register and later successfully moved to the Principal Register after acquiring distinctiveness through extensive use. Some notable examples mentioned in the search results include:

Best Buy - The electronics retailer brand name was initially descriptive but gained acquired distinctiveness over time.
Bank of America - The bank's name was geographically descriptive but eventually acquired secondary meaning.
Texas Instruments - The company name was initially on the Supplemental Register but later moved to the Principal Register.
5 Hour Energy - The energy drink brand name was descriptive of the product's duration of effect but gained distinctiveness.
Hotels.com - The travel booking website domain name was descriptive of the services offered but acquired secondary meaning.
Lowe's - The home improvement retailer's surname-based brand name started on the Supplemental Register before acquiring distinctiveness.
Overstock.com / O.co - The online retailer's descriptive domain name was first on the Supplemental Register.
ETrade.com - The online trading platform's descriptive domain name acquired distinctiveness over time

How can a trademark move from the Supplemental register to the Principal register?

It typically takes around 5 years of continuous and exclusive use for a trademark to transition from the Supplemental Register to the Principal Register, although this is not a strict requirement. The key points are:

After a mark has been in use for a sufficient period (typically five years), and evidence can be provided that the mark has acquired distinctiveness (secondary meaning), it may be eligible to move from the Supplemental Register to the Principal Register
The "Five Years of Use" method demonstrates substantial and exclusive use of the mark in commerce for five years before claiming distinctiveness. This can be accepted as prima facie evidence in "appropriate cases," but the USPTO might require additional evidence based on the nature of the mark
In many situations, use of the mark for 5 years provides adequate use for moving a trademark from the Supplemental Register to the Principal Register, but 5 years is not a specific requirement
The trademark owner can file to the Principal Register at any point they feel the trademark has acquired distinctiveness, which may be before or after the 5-year mark
To move a trademark from the Supplemental Register to the Principal Register, the owner must file a new trademark application for the Principal Register, as it is not possible to directly amend a Supplemental Register registration to the Principal Register

So while 5 years is often cited as a typical timeframe for a mark to acquire the necessary distinctiveness to transition from the Supplemental to the Principal Register, it is not a hard rule. The key factor is demonstrating that the mark has acquired distinctiveness through use in commerce, which may take more or less time depending on the specific mark and circumstances.

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