What Is a Supplemental Register?

Trademarks are a crucial part of establishing and protecting your brand. At their core, trademarks help distinguish your goods or services from competitors, building recognition and trust among customers. However, registering a trademark isn’t always straightforward, especially when dealing with marks that lack inherent distinctiveness. 

This is where the concept of trademark registers comes into play. Most people are familiar with the Principal Register operated by the United States Patents and Trademark Office (USPTO), but few truly understand the significance of the Supplemental Register and how it can benefit businesses, especially when their desired trademark doesn’t immediately qualify for the former.

The trademark attorneys at Emerson Thomson Bennett will explain everything you need to know about the Supplemental Register — what it is, how it differs from the Principal Register, and when you should consider using it to protect your brand.

What Is the Supplemental Register?

The Supplemental Register is a secondary trademark register maintained by the United States Patent and Trademark Office (USPTO). It was created to provide some level of protection for marks that do not meet the requirements for placement on the Principal Register. 

Specifically, descriptive trademarks that lack distinctiveness or consist of common surnames and geographic terms often qualify for the Supplemental Register. While these marks may not be inherently distinctive, they still have the potential to acquire distinctiveness — also known as secondary meaning — over time through continuous use in commerce. 

Key Characteristics:

• Purpose: It provides a pathway to protect marks that are not yet eligible for the Principal Register.
• Examples: Descriptive phrases like “Great Coffee Beans” or “Sweet Baking Co.” could initially qualify for the Supplemental Register. Over time, as they gain distinctiveness, they might become eligible for the Principal Register.

Differences Between the Principal and Supplemental Registers

Understanding how the Supplemental Register differs from the Principal Register is essential to determining which is the right fit for your mark. 

Requirements for Registration

• Principal Register: Trademarks must be inherently distinctive or have acquired distinctiveness. Examples include unique logos, coined words, or arbitrary terms not connected to the goods or services they represent.
• Supplemental Register: Accepts marks that are descriptive, surnames, or geographic terms and lack inherent distinctiveness. 

Legal Protections

• Principal Register: Offers robust protections, including presumptive validity and ownership, the ability to enforce trademarks in federal court, and protection against confusingly similar marks. 
• Supplemental Register: While it doesn’t provide all the benefits of the Principal Register, it offers important advantages like the right to use the ® symbol and protection against other parties registering confusingly similar marks. 

Opposition

Applications to the Principal Register can be opposed during the publication phase, while applications to the Supplemental Register cannot be opposed. 

Acquired Distinctiveness

Marks on the Supplemental Register can “graduate” to the Principal Register once they acquire secondary meaning.

Benefits of Registering on the Supplemental Register

If your trademark qualifies for the Supplemental Register, there are several compelling reasons to take advantage of this option. 

1. Build Recognition Over Time

While the mark may lack immediate distinctiveness, registration provides a foundation for acquiring distinctiveness in the long term. 

2. Use of ® Symbol

You can use the ® symbol to signal that your mark is federally registered — helping to deter infringement. 

3. Visibility in the USPTO Database

Placement ensures that your mark is searchable in the USPTO database, reducing the likelihood of others attempting to register similar marks. 

4. Global Trademark Protection

Registration can support international trademark applications by demonstrating the use and ownership of the mark in the United States.

5. Legal Recourse

Marks can still be used to initiate infringement lawsuits in federal court when necessary. 

When to Use the Supplemental Register

There are certain situations where registering your mark on the Supplemental Register makes strategic sense. 

Descriptive Trademarks

If your desired mark is descriptive of your product or services — such as “Crunchy Granola Co.” — but lacks inherent distinctiveness, it provides a pathway to securing some level of protection. 

Brand Development for Startups

Many startups use descriptive marks to communicate their products to customers. While these may not initially qualify for the Principal Register, placing them on the Supplemental Register allows for protection as the brand grows and acquires distinctiveness. 

Geographic and Surname Marks

Marks that consist of geographical locations (ex. “Napa Valley Wines”) or surnames (ex. “Taylor’s Chocolates”) are inherently challenging to register. It provides a foothold to secure them. 

Protect Your Trademark With Confidence

Navigating the complexities of trademark registration — be it the Principal or Supplemental Register — can be challenging for small business owners and entrepreneurs. But it doesn’t have to be.

At Emerson Thomson Bennett, our experienced team of intellectual property attorneys is here to guide you every step of the way. Whether you’re aiming to secure a spot on the Supplemental Register or looking to upgrade your mark to the Principal Register, we have the legal representation to help. 

Don’t leave your brand unprotected. Contact Emerson Thomson Bennett today and secure the future of your business.