Basis for Filing
During Federal Trademark Registration Process, 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.
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 for example, geographically descriptive marks, but are capable of distinguishing an applicant’s goods or services over time. Marks registered on the Supplemental Register are excluded from receiving the legal advantages. The excluded sections are listed in 15 U.S.C. 1094. Still marks on the Supplemental Register vest some of the same substantive rights as marks on the Principal Register, such as:
- the right to use a notice of federal trademark registration, such as the ® symbol;
- right to bring a trademark infringement suit in federal court, along with a claim of unfair competition; and
- the right to be cited by a USPTO (United States Patent and Trademark Office) examining attorney against a later-filed application to register a confusingly similar mark for related goods/services, even on the Principal Register.
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; firstname.lastname@example.org.
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.