(510) 649-1331 sjadams@adamslaw.biz

A office action from the U.S. Patent & Trademark Office states that the trademark is not “distinctive” and therefore will not be allowed register on the Principal Register. However the mark may qualify for registration on the Supplemental Register. What does this mean?

Descriptive marks are not allowed on the Principal Register, however they may be allowed on the Supplemental Register. A descriptive mark means some part of 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.

A descriptive mark cannot be registered on the Principal Register, but it may be registered on the Supplemental Register. 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, and cannot be distinctive
Entitled to use ® Entitled to use ®

Bar to subsequent registrations of confusingly similar marks

Bar to subsequent registrations of confusingly similar marks
Registered mark is presumed valid No presumption of validity of registered mark
Can file intent-to-use trademark application Cannot file intent-to-use trademark application
May be declared incontestable after five years Cannot be declared incontestable
Published for opposition Not published for opposition
Subject to cancellation proceedings Not subject to cancellation proceedings













A key feature of trademark registration, on either 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.

And, in some situations it might be advantageous to have a mark register on the Supplemental Register without requiring publication for opposition — just ask anyone who has had an opposition filed after publication!

It’s Important to Protect A Descriptive Brand Name

It often happens that, when launching a business, the business chooses a descriptive brand — a descriptive trademark. It is important to apply for registration of the descriptive trademark to protect the brand name. The descriptive trademark may be entitled to registration on the Supplemental Register, and that will prevent competitors from obtaining a registered trademark of a confusingly similar name.

In addition, it’s possible for a descriptive mark on the Supplemental Register to  “acquire distinctiveness” over time. If a descriptive mark acquires distinctiveness the mark may be entitled to registration on the Principal Register. A mark may acquire distinctiveness by five years of continuous use, in combination with advertising and marketing efforts. Thus, a mark that is descriptive and initially registered on the Supplemental Register may subsequently become registered on the Principal Register. 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.


This blog is made available by Adams Law Office for educational purposes only to convey general information and a general understanding of the law, and not to provide specific legal advice. By using this blog you acknowledge there is no attorney-client relationship between you and Adams Law Office. The case law and analysis provided in this blog reflect the date that the article is written. Subsequent events, updates, or case law may result in a change in the analysis provided herein. This blog does not contain any such updates or subsequent case law. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances.