The US Supplemental register: an alternative for Trademark registration in the USA

In the United States, trademarks benefit from protection once they are registered on the Principal Register. However, a second register exists: the Supplemental Register. This additional register offers an alternative for brands refused for lack of distinctiveness. Below is an overviewof this dual registration system.

Key differences between the principal and supplemental registers

Trademark protection in the United States is complex, due to the importance of trademark use in the US legal system.

The principal register: maximum protection

Registration on the Principal Register provides the highest level ofprotection to the trademark owner. The owner is entitled to sue against any filing for a confusingly similar trademark or any use ofa similar trademark. However, they must prove trademark use for the relevant goods and services every 5 years to benefit from a presumption of validity of their trademark.

Furthermore, a trademark registered on the Principal Register may acquire incontestable status, provided it is continuously used. Its owner can register the trademark with US Customs services to prevent the importation of infringed products.

Benefits of principal register registration:

• Nationwide constructive notice of ownership
• Legal presumption of validity and exclusive right to use the trademark
• Right to use the ® symbol
• Potential incontestability after five years of continuous use
• Basis for foreign trademark applications
• Protection against conflicting subsequent filings

The supplemental register: limited but valuable protection

These advantages do not exist for the Supplemental Register. However, regardless of the register, trademarks are protected against subsequent conflicting filings.

Benefits of Supplemental Register registration include :

• Right to use the ® symbol with the trademark
• Ability to bring an infringement action before federal court
• Blocking effect against subsequent confusingly similar trademarks
• Basis for foreign trademark applications
• Opportunity to acquire distinctiveness over time

How to obtain protection on the supplemental register?

During examination of the filing, the US Trademark Office (USPTO) may reject a trademark registration application for lack of distinctiveness. If the applicant unable to convince the Examiner to withdraw their Objection, one solution may be to transfer the trademark registration application to the Supplemental Register.

Acquiring distinctiveness through use

Once registered, the trademark may gradually acquire distinctiveness through use and become a fully protectabletrademark. For example, the mark AMERICAN AIRLINES, initially lacking distinctiveness for an American airline company, acquired distinctiveness through use and reputation.

The mark protected on the Supplemental Register is therefore a potential trademark, a trademark in the process of becoming distinctive.

Rights conferred by supplemental register

This confers rights on its owner:

• Authorization to use the “registered” ® symbol with their mark
• Ability to bring an infringement action before federal court
• Right to oppose the registration of a subsequent confusingly similar trademark

Furthermore, a registration on the Supplemental Register can serve as a basis for filing trademark applications in another country.

Key limitations of the supplemental register

Beyond the absence of presumption of validity, the difference will be the lack of claim to exclusive rights over the element or elements lacking distinctiveness. For example, laudatory terms such as “super” or “great” cannot be claimed as exclusively.

In practice, it’s often more difficult to prove trademark infringement for marks registered on the Supplemental Register.

Important limitations:

• No legal presumption of validity
• No constructive notice of ownership
• Cannot become incontestable
• Cannot be registered with US Customs
• Requires disclaiming descriptive or generic elements

Strategic considerations and Madrid Protocol

It should be noted that trademark applications filed under Section 66(a) of the US Trademark Act cannot claim registration on this Supplemental Register. This concerns international trademark applications filed under the Madrid Protocol.

Practical strategic advice

In practice, a company should consult a trademark law firm: if their trademark is weakly distinctive according to US criteria, it is more relevant to file a national application without going through the Madrid Protocol. Thus, if the trademark is rejected by the USPTO, the owner will have the option to request protection on the Supplemental Register.

When to consider the Supplemental Register:

• Descriptive trademarks: When your trademark describes characteristics of goods/services
• Geographically descriptive trademarks: trademarks indicating geographic origin
• Nicknames: Personal names that haven’t acquired distinctiveness
• Building distinctiveness: As an interim step while building brand recognition

Transitioning to the principal register

After five years of continuous and exclusive use, a trademark registered on the Supplemental Register may acquire sufficient distinctiveness to qualify for the Principal Register. This transition requires:

• Filing a new application for Principal Register
• Demonstrating acquired distinctiveness through evidence of use
• Providing proof of consumer recognition
• Meeting all Principal Register requirements

Comparison table: Principal vs. Supplemental Register

Principal Register:

• Eligibility: Inherently distinctive trademarks
• Presumption of validity: Yes
• Incontestability: Available after 5 years
• Customs recordation: Yes
• Opposition period: 30 days after publication

Supplemental Register:

• Eligibility: Descriptive trademarks capable of distinguishing
• Presumption of validity: No
• Incontestability: Not available
• Customs recordation: No
• Opposition period: None (published after registration)

Conclusion: professional guidance is essential

Understanding the dual register system in the United States is essential for developing an effective trademark strategy. While the Supplemental Register offers more limited protectionthan the Principal Register, it provides a valuable stepping stone for trademarks acquiring distinctiveness.

Working with experienced trademark counsel ensuresinformed strategic choices, whether pursuing a national filing, using the Madrid Protocol, or strategically utilizing the Supplemental Register as a foundation for future Principal Register protection.

Stéphane Bellec, Partner

Intellectual Property Attorney

Email: sbellec@debaecque-avocats.com

Tel: +33 (0) 1 53 29 90 00