It often happens that a business chooses a descriptive trademark for its brand name or products. A descriptive trademark may be entitled to registration on the Supplemental Register, however descriptive trademarks are not entitled to registration on the Principal Register. What does registration on the Supplemental Register mean?
Only arbitrary and fanciful trademarks are allowed on the Principal Register. A descriptive trademark may only be registered on the Supplemental Register. A descriptive mark means that the mark describes a characteristic of the goods or services. For example, INK TATOO CO. is registered on the Supplemental Register because it is descriptive of the tattoo services provided.
There are many advantages to registration on the Supplemental Register. Some key features of trademark registration on the Supplemental Register are:
- Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services.
- Use of the registration as a basis to bring a lawsuit for trademark infringement in federal courts.
- Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
- Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
- Inclusion of the mark in the USPTO’s database of registered and pending marks, which will:
- Provide public notice of the registration;
- Make it easier for third parties to find the registered mark; and
- Potentially deter third parties from using confusingly similar marks.
Below is a chart that compares some features of registration on the Principal Register and on the Supplemental Register.
|Principal Register||Supplemental Register|
|Trademark must be distinctive||Trademark may be descriptive, but cannot be generic|
|Entitled to use ®||Entitled to use ®|
|Can prevent subsequent registrations of confusingly similar trademarks||Can prevent subsequent registrations of confusingly similar trademarks|
|Registered mark is presumed valid||No presumption of validity of registered mark|
|Can file intent-to-use trademark application||Cannot be used in an intent-to-use trademark application|
|May be declared incontestable after five years||Cannot be declared incontestable after five years|
|Published for opposition||Not published for opposition|
|Subject to cancellation proceeding||Not subject to cancellation proceeding|
A key advantage of trademark registration, on either the Supplemental or the Principal Register, is that the mark is in the USPTO database. A registered mark can be a bar to subsequent registrations of confusingly similar marks. So, it’s better to have a mark on the Supplemental Register rather than to have no trademark registration at all.
For all these reasons, having a registration on the Supplemental Register provides many benefits to trademark owners. Adams Law Office can assist with applying for all types of trademarks. Contact Adams Law Office if you have questions about trademarks.
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