While most federal trademark applications seek registration on the Principal Register, not all of the trademarks identified in these applications qualify. But this is not the end of the road for some, since they may qualify for the other, lesser known, register called the Supplemental Register.
The Supplemental Register is home to marks that are not inherently distinctive, such as marks that merely describe the goods or services they are used in connection with. Think SOCKS’ N BULK for socks (Reg. No. 5658357) or POCKET BALM for body creams, soaps, and balms (Reg. No. 5658309).
The Supplemental Register is great for these kinds of marks because a registration on this register provides many (but not all) of the benefits a registration on the Principal Register does, including:
· you get to use the ® trademark symbol,
· the registration will prevent identical or confusingly similar trademarks that are subsequently filed from being registered,
· the registration provides notice to those searching the USPTO database that you are using the mark,
· the registration provides a basis for an infringement suit in federal court, and
· the registration helps to protect your mark while you establish the distinctiveness required to qualify for the Principal Register.
So what protections are missing when your trademark is registered on the Supplemental Register that trademarks on the Principal Register get? First, you do not get a presumption of ownership. Second, you cannot claim incontestability status five years after registration. But after your mark is in use for five years, you may be able to get a presumption of acquired distinctiveness that will help you to register your trademark on the Principal Register. In the meantime, registration on the Supplemental Register can provide valuable protection.
If you would like to learn more about this or have any other trademark-related questions, please contact us today.