Trademarks 101 · The Supplemental Register
There’s a second register for marks that aren’t distinctive…yet.
Many people don’t know that the Trademark Office actually keeps two registers. The “Principal Register” is the one everyone means when they talk about a “registered trademark.” The Supplemental Register is for marks that describe the goods today but could come to identify you over time. It’s a real registration with real limits, and it’s often the practical answer to a descriptiveness refusal.
If you read nothing else
- What it is
- A second federal register for marks that aren’t quite distinctive yet but that could become so over time. Things like descriptive terms, surnames, place names, and some product shapes and colors. It’s codified as Section 23 of the Trademark Act, and the mark has to be in use before you can apply to this register.
- What you get
- The ® symbol, a registration the Trademark Office will cite against later applications for confusingly similar marks, the right to sue for infringement in federal court, and a basis for filing abroad.
- What you won’t get
- A Supplemental registration enjoys no presumption that the mark is valid or that you own it, no nationwide notice to later adopters, no incontestability after five years, and no recording with Customs to stop infringing imports. In a dispute, you’ll have to prove distinctiveness yourself by offering survey evidence and the like, which can be quite costly.
- Who can’t use it
- A generic term never qualifies for the Supplemental Register, either. An intent-to-use application can’t move to the Supplemental Register until you’ve shown use. And a mark that’s already distinctive belongs on the Principal Register instead.
The pros and the cons
Pros
You get a registration you can use today.
- You can use the ® symbol once it registers, and anyone searching the Trademark Office’s database will find your mark
- The USPTO cites it against later applications for confusingly similar marks
- There’s no opposition period before it issues, so it usually registers sooner
- It doesn’t stop you filing again: after five years of use you can apply to the Principal Register under Section 2(f)
Cons
There’s less oomph behind it if someone pushes back.
- There’s no presumption that the mark is valid or yours: in court, you’ll need to prove distinctiveness and ownership first
- There’s no constructive notice and no incontestability, two of the Principal Register’s biggest advantages
- It can’t be recorded with U.S. Customs to stop infringing imports
- It concedes the mark wasn’t distinctive on the day you filed, which a rival could point to later
How you get there, and back again
Amend after a refusal
Most marks arrive here by answering a descriptiveness refusal: instead of arguing, you ask the examiner to amend the application to the Supplemental Register. It’s usually the quickest route to a registration, and we’ll tell you in writing whether it’s the right one for your mark. That said, you need to be already using your mark commercially to take this route.
Use it like any registration
Once it registers, mark the goods with ®, watch for look-alikes, and keep it alive with the same maintenance filings a Principal registration needs: between years five and six, and every ten years.
Level up when the mark has earned it
After about five years of continuous, substantially exclusive use, you can file a new application for the Principal Register under Section 2(f). Your Supplemental registration stays in force while that one is examined, so you’ll want to keep up its maintenance filings at the same time.
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This sheet is general information, not legal advice for your situation. Talk to us about yours.