Supplemental Register

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 the 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 to 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 is no formal opposition proceedings for trademarks that are filed on a supplemental register.

There are some drawbacks for 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 for 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 in 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 uncontestable, 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 some time 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.

• Does My Trademark Need to Match My Company Name? ()
• What Is a Trademark? ()
• Can I Add More Products and Services to My Trademark Application After It Has Been Filed? ()
• Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks) ()
• What Is Conventional Priority? ()
• Can I Change the Trademark Itself After My Trademark Application has been Filed? ()
• How Long Does It Take to Register a Trademark? ()
• Can I Trademark Dictionary Words? ()
• Can I Trademark the Same Brand for Different Products or Services? ()
• Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks) ()
• Can I Trademark a Brand Before It Is Launched? (Intent-to-Use Trademarks) ()
• Is My Trademark Available? ()
• Should I Trademark My Startup's Brand? ()
• In Whose Name Should I Apply For My Trademark? ()
• Will the Trademarks Office Help Me Enforce My Trademarks? ()
• Should I Trademark a Logo Done On Fiverr? ()
• How Much Does It Cost to Register a Trademark? ()
• Should I Trademark My #Hashtags? ()
• Are There Annual Trademark Maintenance Fees? ()
• If I Register My Trademark, Does It Mean No One Can Use It? ()
• Four Things Most Commonly Trademarked (The Trademark Dance) ()
• How Does Trademark Factory's Guarantee Work? ()
• What Are Nice Classes of Goods and Services ()
• Do I Have to Be an American Resident to File in the U.S.? ()
• How Are Service Marks Different From Trademarks? ()
• What Are Oppositions? ()
• 3 Most Important Benefits of Registering Trademarks ()
• Why Register a Trademark in Canada to Get a .CA Domain Name? ()
• What is Post-Allowance Statement / Declaration of Use? ()
• Am I Protected Between the Filing and the Registration of My Trademark? ()
• What Is Post-Registration Statement of Use? ()
• How to Use Trademarks to Create a Sense of Uniqueness for Your Business? ()
• What Goes Into a Trademark Application? ()
• What Happens If You Don't Respond to Correspondence from Trademarks Office in Time? ()
• What Makes a Brand Valuable? ()
• Is Registering a .COM Domain Name Enough to Secure Trademark Rights? ()
• Why Is It Important to Preserve Evidence of Use of My Trademarks? ()
• Do I Need an Agreement with My Logo Designer? ()
• Andrei Mincov's story ()
• What is Madrid Protocol? ()
• Trademark Factory Ultimate package ()
• What Are Official Marks in Canada? ()
• Trademark Factory I Feel Lucky package ()
• How Will a Trademark Examiner Examine My Trademark Application? ()
• Can You Trademark Book Titles? ()
• Trademark Factory All-Inclusive package ()
• Trademarks vs. Trade Names ()
• Look-Alike and Sound-Alike Trademarks ()
• Will the Trademark Examiner Check Other Applied For Trademarks? ()
• Trademarking Words in a Fancy Font? ()
• Will the Trademark Examiner Check Unregistered Trademarks? ()
• You Received an Office Action. Now What? ()
• How Long Is a Trademark Registration Good For? ()
• When Should I Trademark My Brand? ()
• Why is Google the Textbook Example of What Not to Do with Your Trademark? ()
• Should I Claim Color as a Feature of My Trademark ? ()
• What Is the Difference Between Trademarks and Patents? ()
• How Should I List Products and Services in My Trademark Application? ()
• What Is the Difference Between Trademarks and Copyright? ()
• When Should I Trademark My Logo? ()
• What Are the Two Main Reasons My Trademark Application Can Be Rejected? ()
• What Is the Trademarking Process? ()
• Can I Mention Someone Else's Trademark on My Website? ()
• What Is An Acceptable Specimen of Use? ()
• What Are Generic, Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks? ()
• What Is UDRP Uniform Domain Name Resolution Policy? ()
• How Do I Trademark Product Names? ()
• When Am I Allowed to Put TM Next To My Brand? ()
• How Do I Trademark Service Names? ()
• What Are Word Marks, Design Marks, and Combined Marks? ()
• What Should I Know About Trademarking Slogans and Taglines? ()
• Should I Trademark My Name Or My Logo ()
• Adding Elements to My Trademark to Overcome Confusion or Descriptiveness ()
• Are Famous Trademarks Treated Differently From Regular Trademarks ()
• Received an Invoice For International Publication of Trademark ()
• What Should I Do If Somebody Infringes on My Trademark ()
• Do Trademarks Protect Their Foreign Equivalents ()
• What Should I Do If Somebody Accuses Me of Infringing Their Trademark? ()
• Asian Domain Name Scam ()
• What Are Two Biggest Branding Mistakes? ()
• Are Dead Trademarks a Problem? ()
• What Is The Difference Between a TM and an R in a Circle Symbols ()
• What Does Using a Trademark Mean? ()
• How Do I Choose a Great Brand for my Business, Product, or Service ? ()
• What Is Weekly Confusion Watch Service? ()
• What Are Ornamental Trademarks? ()
• What Happens If I Don't Renew My Trademark In Time? ()
• What Does Confusingly Similar Mean? ()
• What Is a Trademark Assignment Agreement? ()
• What Does Date of First Use Mean? ()
• What Is a License Agreement? ()
• Why Is Search So Important? ()
• What Are Incontestable Trademarks? ()
• How Do I Check the Current Status of my Trademark Application? ()
• Important Amendments to Canada's Trademark Law ()
• How To Trademark a Name and Logo ()
• Trademarking Strategies For Life And Business Coaches ()
• How Do I Cancel Someone Else's Trademarks? ()
• Why Do Celebrities Trademark Their Catchphrases? ()
• How George Clooney Made $1 Billion Using Trademarks? ()
• Misspellings and Other Changes to Get Around Someone Else's Trademark ()
• How To Protect Your Brand On Amazon? ()
• Dividing a USPTO Trademark Application ()
• 5 Movies with Unbelievable Scenes about Trademarks and Intellectual Property ()
• Trademark Factory's New & Improved I Feel Lucky Package ()
• The Dumbest Advice About Trademarks You Could Ever Give ()
• 5 Things You Should Never Say About Your Brand ()
• Trademarks vs Domain Names ()
• What's Your Brand Worth? ()
• 3 Y's Of Protecting Your Brand ()
• Matrix of Success 2 Things a Business Needs for Success ()
• How Coca Cola Trademarked Their Brand ()
• Trademarks: Certainty vs. Commitment ()
• Trademarking Process In a Nutshell - TMs Into Rs Brand Protection Formula ()
• Can I Trademark An App ()
• 3 Types Of Businesses And What This Has To Do With Trademarks ()
• Incorporation vs Trademarking ()
• 3 Nasty Trademark Rip Offs And How To Avoid Them ()