Supplemental Register vs. Principal Register for Trademark Registration

During the federal trademark registration process, whether an application is filed on an intent-to-use or use-in-commerce basis, an option may arise to move the application to the Supplemental Register instead of the preferred Principal Register. Understanding this option can be crucial for technology startups seeking to protect their brands.

What is the Supplemental Register?

The Supplemental Register is reserved for certain marks that are not initially eligible for registration on the Principal Register, such as geographically descriptive marks, but are capable of distinguishing an applicant’s goods or services over time. Marks registered on the Supplemental Register do not receive the same legal advantages as those on the Principal Register, as listed in 15 U.S.C. §1094. However, marks on the Supplemental Register do enjoy some substantive rights, such as:

• The Right to Use a Notice of Federal Trademark Registration: This includes the ability to use the ® symbol.
• The Right to Bring a Trademark Infringement Suit in Federal Court: Along with a claim of unfair competition.
• The Right to be Cited by a USPTO Examining Attorney: Against a later-filed application to register a confusingly similar mark for related goods/services, even on the Principal Register.

Benefits of the Supplemental Register

While the Supplemental Register does not confer all the benefits of the Principal Register, it still provides important protections that can be advantageous for startups:

1. Federal Recognition: Having a mark on the Supplemental Register provides a level of federal recognition that can deter potential infringers.
2. Use of ® Symbol: This symbol signals that the mark is federally registered, which can enhance credibility and brand trust.
3. Legal Recourse: Ability to sue in federal court for trademark infringement and unfair competition.

Supplemental Register Limitations

Despite these benefits, there are notable limitations to registration on the Supplemental Register that tech startups should be aware of:

1. Cancellation Vulnerability: Marks on the Supplemental Register can be canceled at any time by a third party through a court proceeding or a cancellation proceeding in the USPTO.
2. Lack of Presumption of Validity: These marks do not enjoy the presumption of validity that marks on the Principal Register do, making them more vulnerable to legal challenges.
3. Inability to Prevent Importation: Owners of marks on the Supplemental Register cannot prevent the importation of infringing or counterfeit products.

Strategic Federal Trademark Filing

The decision to amend a trademark application to the Supplemental Register should be made within the context of the venture’s global branding and digital marketing strategy. This includes considering design elements (e.g., logos) and analyzing the net commercial impression of the mark. Technology startups—whether in healthcare innovation, banking, gaming, publishing, or B2B SaaS—rely heavily on brand recognition, such as product names, logos, app icons, tag lines, and branded social media forums to reach customers.

A strategic federal trademark filing and management strategy is key to maximizing legal positioning, legal priority, and resolving intellectual property infringement issues proactively. Here are some strategic considerations:

1. Assess Brand Distinctiveness:
   • Evaluate whether your mark is inherently distinctive or if it can acquire distinctiveness over time through use.
2. Evaluate Marketing and Branding Goals:
   • Consider how the placement on the Supplemental Register aligns with your long-term branding and marketing strategies.
3. Document Use and Recognition:
   • Keep thorough records of how the mark is used in commerce and gather evidence to support its acquired distinctiveness.
4. Seek Expert Legal Guidance:
   • Consult with a trademark attorney to understand the nuances of the Supplemental Register and develop a comprehensive trademark strategy.

Consult with a Trademark Expert

Navigating the complexities of the federal trademark registration process and understanding the strategic implications of the Supplemental Register requires expert legal guidance. David Nima Sharifi, Esq., Principal Attorney at L.A. Tech and Media Law Firm, specializes in intellectual property law and can help you protect your brand effectively.

For a confidential consultation to discuss your trademark registration strategy, contact David Nima Sharifi, Esq. today. Ensure your brand is protected with professional guidance and strategic legal support.

In conclusion, the Supplemental Register offers a valuable option for tech startups seeking trademark protection, despite its limitations compared to the Principal Register. By understanding the benefits and strategic considerations, startups can make informed decisions to enhance their brand’s legal protection. For expert legal advice and assistance, reach out to David Nima Sharifi, Esq. at L.A. Tech and Media Law Firm.

Whether an application is filed as an intent-to-use or use-in-commerce basis, an option may arise to move the application on to the Supplemental Register as opposed to the preferred Principal Register.

Supplemental Register in the USPTO

The Supplemental Register is reserved for certain marks that are not initially eligible for registration on the Principal Register, such as for example, geographically descriptive marks, but are capable of distinguishing an applicant’s goods or services over time.

Supplemental Register Limitations

• it may be canceled at any time by a third party through a court proceeding or through a cancellation proceeding in the U.S. Patent and Trademark Office;
• More vulnerable to legal challenges, due to lack of presumption of validity; and
• The inability of mark owners on the Supplement Register to prevent the importation of infringing or counterfeit products*

*Owners of marks on the Supplemental Register are still permitted to sue for trademark infringement based upon their common law rights, if any, provided there is evidence that the registered term actually functions as mark. 

Strategic Federal Trademark Filing

Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2015. All rights reserved. 

This post does not imply any affiliation with or endorsement by the USPTO. Please visit USPTO home page for more information.