Supplemental Register

The USPTO Supplemental Register is essentially a secondary list for marks that still afford some protection, but do not meet the standards for the USPTO Principal Register. Descriptive marks and surnames often get put on the Supplemental Register as long as they still distinguish the goods and services in some way. Generally, you always apply for the Principal Register and only move to Supplemental if the examiner objects and suggests it.

Here is a summary of the differences between the registers.

Placement on the Supplemental Register does not:

• provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation;
• support a later claim of incontestability status;
• imply the right to exclusive use of the mark; or
• allow the mark’s owner to request exclusion of imports by the Bureau of Customs.

Supplemental registration does offer some benefits such as:

• the right to use the circled “®” abbreviation to discourage would-be infringers;
• the ability to register the mark in countries that offer reciprocal trademark rights;
• the right to obtain injunctive relief, money damages, treble damages, and defendant’s profits in the event that the mark owner should win an infringement action (which is more difficult to win on the supplemental register, but not impossible);
• shows up on trademark searches and may deter others from using a similar mark; and
• can result in an objection by a trademark examiner to an application for a confusingly similar mark.

Originally published at https://www.lawbylevin.com on September 15, 2020.