Supplemental Trademark Registery

Trademarks have value; some more than others. Generally speaking, those trademarks that are unique are more valuable than those trademarks that describe the product or service that is associated with the mark.

When clients approach me with suggestive or descriptive marks, they are often disappointed when I don't share their enthusiasm. The internet is full of marketing experts recommending that service providers or manufacturers brand their products with names that tell the consumer exactly what they will be getting. Marketing experts argue that these types of names are more likely to be remembered by the public. That may be true. What is also true is that names that describe the product are weak trademarks or are not trademarks at all.

Trademarks that merely describe the service or product associated with the mark are placed on the USPTO Supplemental Register. When a trademark is placed on the supplemental register, the owner does not derive the same benefits and protections for the trademark as if it were registered on the USPTO Primary Register. Trademarks listed on the Primary Register are "real" trademarks that receive all of the benefits of federal trademark registration.

The USPTO Supplemental Register includes marks that do not qualify for federal trademark protection because they are not distinctive enough to indicate the source of the product. The common types of marks that end up on the supplement register include those that are geographically descriptive, descriptive in general, and surnames. These marks may at some point, generally, at least after five years of use, become a source indicator, but at the point of filing, they are merely descriptive of the product or service. These marks do not receive the same protections as those listed in the Primary Register. In fact, placement on the Supplemental Register does not indicate ownership of the mark, start the timer for incontestability of the mark, or imply exclusivity of the mark.

So, what's the point of registering a mark on the Supplemental Register?

1. The Federal Registration Symbol may be used when the mark is used with the goods or services identified in the application;

2. Registration on the Supplemental Register allows the trademark owner to seek reciprocal rights in foreign countries; and

3. Providing proper notice of some trademarks rights makes injunctive relief and other remedies available to a trademark owner who successfully sues an infringer (very unlikely).

For all of these reasons, applicants should always fight for registration on the Principal Register. There are legal arguments supporting aquired distinctiveness of even the most descriptive marks, which would make the marks eligible for the Primary Register. Also, what might appear to be descriptive, might actually be suggestive, which is protectable on the Primary Register without a showing of acquired distinctiveness. Try for the Principal Register, if you fail, amend the application to the Supplemental Register.

Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution.  This article is for information and advertising purposes and does not constitute legal advice.  No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients.  Ahaji Amos can be reached at ahaji@ahajiamos.com.  More information can be found at https://ahajiamos.com.