TRANSCRIPT

The U.S. is unique in that it has two levels of trademark registers, whereby pretty much everyone else has a single trademark register and you either get there or you don't. In the U.S., they have the principal register, where everyone wants to go to, and there is also the supplemental trademark register for trademarks that didn't quite make it there.

The number one reason your trademark would go to the supplemental trademark register is if the Trademarks Office thinks that your trademark is descriptive, that all it does is it describes a certain feature or characteristic of your product or service, and you can't convince the trademark examiner to accept your arguments why it's actually not descriptive and it should go to the principal trademark register.

You may get a feeling that a supplemental trademark register is a place for not-quite trademarks. In a way, it's true, but when your trademark goes to the supplemental register, it's a lot better than not having a trademark at all. I'm going to explain what are the pros, what are the cons.

The good thing about the supplemental register is that, first of all, when your trademark gets there, you can still use the 'R' in a circle next to your trademark. 99.9% of the Earth population will never ever know that your trademark is actually done in a supplemental register. They think, "It's a registered trademark. We shouldn't mess with it."

The second benefit is that it allows you to bring suits in a Federal court. Again, it allows you to go after people outside of your own state, so you don't have to go to each state and deal with the infringement of your brand on a state level. You can do it on a Federal level.

As soon as your trademark is entered into the supplemental register, what it does is it stops everyone else from being able to register the same trademark as theirs. Just as a regular trademark on a principal register, once you apply for it, it bars registration of confusingly similar trademarks to yours. Whether it's on the principal register or the supplemental register, if you're the first there, you got it.

It allows you to use that filing with the supplemental register as the basis for filing foreign applications, which is also important if you want to go beyond the U.S.

Finally, the last benefit is that trademarks that are applied for in the supplemental register don't have to go through the opposition stage. There are no formal opposition proceedings for trademarks that are filed on a supplemental register.

There are some drawbacks to going with the supplemental register compared to the principal. The first drawback is that your trademark registration with a supplemental register does not create a presumption of ownership and validity. One of the biggest benefits of registering trademarks is that you are given the presumption that when you show the trademark certificate to the judge, it is presumed that you own the trademark and that it's a valid trademark. You don't get that with a supplemental register. When, for example, you bring that suit to the Federal court, you still need to prove that this is a trademark and that you own it.

The second drawback, which is probably going to be irrelevant for most of you, is that a trademark registration with a supplemental register does not allow you to use border measures. When somebody's trying to import a product bearing that trademark, if it's a trademark that's registered in the principal register, sometimes you can request that the goods that are being brought into the country are stopped. You don't have that luxury with the supplemental register.

The last drawback is that a trademark registered on a supplemental register will never become incontestable. We have a video, a separate video, about uncontestable trademarks. With the principal register trademarks, after a certain period of time passes, your trademark becomes incontestable, which means that even if there was somebody with an unregistered trademark who could have a prior right to claim their rights instead of yours after that period passes, they can't go after you.

With a trademark on a supplemental register, that period never passes. If there was somebody prior to you that has a prior right, even if they didn't claim it as a trademark, even if five years passed or 10 years passed or 30 years passed, they can still go after you. If they can prove that they were there before you, they would be able to take the trademark away from you. Having said that, this is a pretty rare occurrence. If they didn't bother to do something about this a long time ago, they probably never will.

The short summary is that, yes, it's better to get your trademarks registered on a principal register, but if you get an objection that says your trademark is descriptive, you can't convince the trademark examiner the first time around, it's sometimes wise to accept their offer to move your application from the principal register to the supplemental register, get it registered there, accumulate some goodwill around your business, around your brand, and maybe sometime in the future, file a new application to the principal register and also claim what's called acquired distinctiveness, that so many people know about you under that brand, that it no longer is descriptive, it actually is your trademark.

One of the questions that we get asked all the time is, "Can we convert a trademark registration on a supplemental register to the trademark registration on the principal register?" The answer to that question is no. A trademark in a supplemental register stays in a supplemental register. If you want a trademark on the principal register in the future, you have to file a separate trademark.