Monday, March 30th, 2015
Sometimes the Trademark Office rejects an application saying the mark is too descriptive, yet they also say you could register the mark on the Supplemental Register. Sounds like double talk. What’s going on? (This often happens to applications to register family names, geographic names, or other descriptive names that are not considered “generic.”)
The Trademark Office only registers most trademarks if they actually function as a trademark. This is why you have to file proof of use to get the registration. Many other countries issue trademark registrations for names that are capable of serving as trademarks. Requiring proof of use can be a disadvantage for US trademark owners. In 1946 the Supplemental Register was created to level the playing field.
US marks registered on the Supplemental Register get the same international treaty benefits as standard trademark registrations (called the “Principal Register.”) You are entitled to (and should) use the ® symbol with trademarks registered on the Supplemental Register. In examining future trademark applications the Trademark Office should not allow an application to register if it conflicts with a mark registered on the Supplemental Register.
The most significant disadvantages of a Supplemental Trademark Registration are that it does not create a presumption of your exclusive rights in the mark, and you are not able to register the mark with US Customs to attempt to stop infringing imports.
When your Supplemental Registration is five years old you may want to apply to register the mark on the Principal Register because at that point the Trademark Office may recognize that it actually does serve as a mark (because it did so for five years.) There are subtleties involved, so speak with your trademark attorney.