Trademark Registration in the Supplementary Registry
Most people are aware of the many benefits of owning a trademark registration with the United States Patent and Trademark Office (USPTO) Master Registry. In fact, trademark owners are urged by trademark attorneys to select distinctive marks in order to be able, after use in interstate commerce, to register there and enjoy numerous presumptions such as validity, ownership, and notice. However, the Supplementary Register also has value, especially when the alternative is initially out of the question.
Before the benefits of supplemental registration are discussed, it is important to understand what a supplemental registration does not provide. Marks are often relegated to the Supplemental Record because, at the request of the USPTO examining attorney, the marks are merely descriptive and therefore are not a distinctive identifier of the source of the goods or services to which the mark pertains. . Such placement does not grant the exclusive right to use the mark in commerce in connection with its identified goods or services. Equally important, it does not serve as prima facie evidence of the validity of the trademark or of the trademark registrant’s ownership of the trademark. Finally, it may be an admission that the mark is not inherently distinctive.
While these drawbacks obviously justify a trademark owner’s desire to register in the Main Registry, a supplementary registration has its own benefits. In fact, some entities choose to have a brand that tells consumers what they are offering (eg, pizzeria) rather than an inherently distinctive brand (eg, Domino’s®) that requires effort to build. Create consumer recognition. Such marks will not justify the main placement, even if they are registered as a supplement. After five years in the Supplementary Registry, the brand can qualify for the Principal Registry for having acquired distinctiveness. It’s worth noting that both allow the owner to use the ® trademark symbol, sue in federal court, and take advantage of certain international treaties.
Therefore, any USPTO registration is better than no trademark registration at all. While the Primary Registration ultimately provides the most benefits and the best protection, the Supplemental Registration should be considered when an entity prefers what is likely to be a merely descriptive mark from the outset or has failed to acquire the required distinctiveness. to register where many consider to be the preferred location.