During the prosecution of a trademark application an applicant may find that the U.S. Patent and Trademark Office (PTO) has rejected their application, but is willing to allow the registration of the associated mark if the application is amended to request registration on the Supplemental Register instead of the Principal Register. The Supplemental Register provides a mechanism for the registration of marks which are capable of distinguishing applicant’s goods, but which may not be registrable on the Principal Register.
When considering whether to amend an application to seek registration on the Supplemental Register it is important to understand the benefits of registration thereon and the tradeoff of such registration vis-à-vis registration on the Principal Register. Advantages of registration on the Supplemental Registration include: (a) the owner of the mark listed on the supplemental register is authorized to use the Federal trademark designation which incorporates an “R” inside of a circle,®; (b) trademark infringement lawsuits for marks listed on the Supplemental Register can be brought in federal court; (c) supplemental registrations may be cited by trademark attorneys at the PTO against future trademark applications; and (d) once a mark registered on the Supplemental Register has been in use for at least five consecutive years, the owner may again apply to have the mark listed on the Principal Register.
Some of the drawbacks of registration on the Supplemental Register instead of the Principal Register are: (a) unlike registrations on the Principal Register, no constructive notice of claim of ownership is provided by a supplemental registration; (b) a supplemental registration does not provide prima facie evidence of the registrants exclusive right to use the mark; (c) a supplemental registration cannot become incontestable after five years of continuous use; (d) a supplemental registration will not automatically convey the usual presumption that the mark is a valid trademark during a litigation; and (e) a supplemental registration cannot be used as a basis to stop the import of infringing goods into the United States of America.
The Supplemental Register can provide a valuable mechanism to begin establishing trademark rights when one wishes to sell goods or services in conjunction with a mark that does not initially qualify for registration on the Principal Register. Accordingly, the Supplemental Register can provide a valuable alternative for start up business ventures, corporations, and individuals as one option when developing a branding campaign.
If you have any questions regarding your branding, trademarks, patents or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC.