A Comprehensive Overview Of The Supplemental Register
The Lanham Act provides for two trademark registers at the United States Patent & Trademark Office (USPTO). See our webpage entitled, Filing Your Trademark On The Principal Register And The Supplemental Register, for the basic distinctions and benefits of each register. This page will discuss some of the more sophisticated issues faced by a trademark applicant when considering which register is appropriate.
One important issue arises if an Examining Attorney refuses your application on the basis that the mark is merely descriptive of the applicant's goods or services. If this occurs, in order to preserve the right to amend the application to the Supplemental Register, the applicant must request this amendment before an ex parte appeal is decided. Under this circumstance, it is highly recommended that an applicant request registration on the Supplemental Register "in the alternative", to registration on the Principal Register.
In other words, the applicant can argue that the applied for mark has acquired secondary meaning, (see our webpage entitled, What Is Acquired Distinctiveness & Secondary Meaning) and therefore, should be registered on the Principal Register under Section 2(f) of the Trademark Act. In the alternative, if it is determined that the proposed trademark has not acquired distinctiveness, but is capable of distinguishing the goods or services identified in the trademark application, then the applicant should argue that it seeks registration on the Supplemental Register. If the applicant does not timely seek this amendment, the applicant will be prohibited from doing so on appeal or after an appeal. This is a wise strategy because it allows the trademark applicant the opportunity to argue for registration on the Principal Register on appeal, but provides the applicant with a fall back position should the appeal be denied.
Another important issue impacting an applicant's filing date may arise if the applicant is seeking registration on the Supplemental Register, and the applicant filed an intent-to-use application under Lanham Act §1(b). In this case, the applicant can only seek to amend its application to the Supplemental Register after the applicant submits an acceptable Allegation of Use or Statement of Use. Further, a trademark applicant proceeding under this set of circumstances should be aware that once the amendment to the Supplemental Register is made then, the effective filing date of the trademark application will be the date of the filing of the acceptable Allegation of Use or Statement of Use (not the original filing date of the application). This could have a significant impact if the applicant is concerned about its first use date or constructive use date.
Once an applicant agrees to registration on the Supplemental Register, the applicant by virtue of agreement acknowledges that at the time of registration, the mark is merely descriptive of its goods or services. This presumption of merely descriptiveness may be rebutted in the future. However, should an owner of a Supplemental Registration want to assert a likelihood of confusion claim in an opposition proceeding or cancellation proceeding, the owner cannot rely only on its registration (as an owner of a mark registered on the Principal Register would), instead it must prove it has acquired secondary meaning before the adverse party's priority date. Interestingly enough, an Examining Attorney will on the other hand, refuse a mark seeking registration on the Principal Register, if it determines that there would be a likelihood of confusion with a mark on the Supplemental Register. This rule applies even if the mark on the Supplemental Register cannot prove secondary meaning. This rule seems to be at odds with the prior stated rule, but decisions rendered by the Federal Circuit have supported the rule. The rationale for allowing an Examiner to use a Supplemental Registration as a basis to refuse another mark on the grounds of likelihood of confusion (without a showing of secondary meaning) is simply that this is one of the benefits of owning a trademark registration on the Supplemental Register.
One final point that needs to be addressed is that a trademark application seeking registration on the Supplemental Register is not published for opposition. However, a petition for cancellation can be filed against it, once it registers. A petitioner for cancellation may include the same grounds as would be available if the mark was registered on the Principal Register, except the "merely descriptive" ground of Section 2(e)(1) does not provide a basis for cancellation. See R.J. Reynolds Foods, Inc. v. Borden, Inc., 163 USPQ 300 (TTAB 1969). If you have any questions regarding which trademark register would be appropriate for your mark, kindly contact one of our trademark attorneys for a courtesy consultation.