November 19, 2018
Originally posted 2018-11-19 10:39:07
By Francisco Martinez and Shandice Sluch|www.amdlawgroup.com
Business starts with a brand and that brand should be protected. Trademark registration is one of the modes of brand protection. If you have gone through the trademarking process you might soon become familiar with the supplemental register. The goal is to get onto the principal register and NOT the supplemental register. If you can make it to the supplemental register that is good and is your pathway to the “big league”, the principal register.
You end up with supplemental register protection when your mark is merely descriptive or emerging on the scene. There is room to grow. Generally, the supplemental register is not the first step in trademark registration—but it is a common step for those who fail the distinctiveness test. The supplemental register is a method to provide limited protection to weak marks that do not satisfy the principal register requirements–it’s basically a waiting room until you gain distinctiveness! The register was created under the Lanham Act in order to provide a place to strengthen trademark applications. For example, a mark that only describes the service (generic mark) will be placed on the supplemental register. The aim of the supplemental register is reiterated by the USPTO’s Trademark Manual of Examining Procedures (TMEP), which states:
The Supplemental Register is for marks that are descriptive in nature. Thus, if a mark is distinctive, the mark cannot be registered on the Supplemental Register…[and] if the application…is found to be distinctive, the application must be amended to the Principal Register.
If refused by the principal register due to lack of distinctiveness, the applicant may receive a save from the trademark office in the form of an offer to be included on the supplemental register. If that happens, consider taking it. While the supplemental register does not grant all of the protections of the principal register, it is still a method for protection. It grants owners the right to give notice of trademark ownership to other businesses and to use the powerful register R trademark symbol. It also allows the owner to sue in federal court in the case of unauthorized use of a trademark.
As soon as conditions are ripe and distinctiveness can be proven, it is time to move the mark up to the principal register. To gain a spot on the principal registration, there are several steps. First, a new application must be submitted. Then, you must show that your once descriptive mark now shows the adequate amount of distinctiveness. To show distinction, the mark needs to be in continuous use for at least five (5) years. A common misunderstanding with this step is to assume that it means five (5) years after on the supplemental register. However, a mark could have been in use before applying to the supplemental register – all the while gaining distinctiveness. If this is the case, evidence should be collected to support the argument that the mark has become distinct enough to represent your business in consumers’ eyes. Evidence can include sales and advertising figures, statements from customers showing that the mark has become distinct, promotional material, and so on can show that the mark is distinctive enough.
Although, the supplemental register is usually not a business’s first choice for mark protection, and very few know what to do when confronted with it. As a result, many people ignore the true purpose of the register, which is to provide time to establish distinctiveness. The most common misunderstanding occurs when applicants consider the register as a rejection by the USPTO. It is not a rejection. In fact, many well-known marks have moved from the supplemental register to the principal register (like American Airlines!). Time on the supplemental register gave American Airlines the time become well known and gain distinctiveness with consumers.
The supplemental register is not the end of the world. Take advantage of it! Building your mark while you wait can benefit your business dramatically. By gathering a following, you can attest to your brand’s distinctiveness and fund the development of the business/brand. You don’t need to be afraid. Embrace it and use it as a second chance to protect your band!