An Overview of the Supplemental Register

The USPTO maintains two lists for trademark registrations: the supplemental register and the principal register. As their names suggest, the principal register is the upper tier of trademark registration and offers more protections than marks listed on the supplemental register. Arguably the most attractive part of being on the principal register is being the presumptive owner of a trademark in all 50 states. Without this, you have an uphill battle if you are suing someone else for trademark infringement. 

This is certainly not to say that having your mark on the supplemental register is useless. For instance, you are still able to use the circled “R” and accompany it with your registered mark. Additionally, the USPTO will deny any marks that are confusingly similar. Being on the supplemental register can also pave the way for your mark to be registered in foreign countries under various international treaties. 

Trademarks Available for Supplemental Register

Some characteristics of a trademark on the USPTO’s supplemental register list are marks that are not distinctive, but merely descriptive. Some marks that are only geographically descriptive are also commonly listed on the supplemental register. Additionally, surnames that operate as trademarks are also eligible for supplemental register protection. 

Can Your Supplemental Register Mark Convert to Principal Register?

There isn’t really a seamless way for your mark that is listed on the supplemental register to be upgraded or converted to being on the principal register; you will still need to complete a separate application to be on the principal register. However, being on the supplemental register can strengthen the case for your mark being deserving of the principal register. You generally have the best case for receiving a place on the principal register after your supplemental register mark has been active for a minimum of five years. 

How to Choose a Name that Can Make it to the Principal Register

To be on the principal register, a trademark can be fanciful, arbitrary, or suggestive. These are all steps above a supplemental register mark, which is characterized by generic wording. You will see what we mean in the following example. 

Let’s say you have a company that wants to be a leader in dirt bike helmets. You want your company’s name to be “Extreme Helmetz.” Even with the alternate spelling of “helmets,” your proposed mark is fairly generic. Although you can surmise from the name alone that you specialize in helmets for recreational purposes, there is nothing truly distinctive about your brand (yet!). If business goes well and a significant chunk of the dirt bike community in the U.S. begins to associate Extreme Helmetz with your unique brand of helmets, then you could be well on your way to the principal register. 

Conclusion

Our firm has extensive experience helping entrepreneurs around the world choose and secure a trademark for their companies so they can build their brand with confidence. We can discuss your options with you and advise you on the best path forward based on your goals. We look forward to speaking with you very soon; please use this link to schedule a 15-minute call with us today. 

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Hayoon Kane Law Firm

I am committed to helping business owners such as yourself understand the intricacies of the law, so you can concentrate on growing your company.

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