The Supplemental Register

When you have a 2(e)1 descriptiveness refusal that can't be overcome, the Supplemental Register is a good choice.

Updated over a week ago

The Supplemental Register is generally available for descriptive marks, provided they are actually used in commerce.

It is always a good idea to get on the Supplemental Register if you have not been able to convince the USPTO that your mark is not descriptive.

The Supplemental Register offers advantages over no registration at all.

Although registration on the Supplemental Register does not provide all the benefits of registration on the Principal Register, it does provide the following benefits

(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, providing public notice of the registration and potentially deterring third parties from using confusingly similar marks.

(2) Inclusion of the registered mark in the USPTO's database of registered and pending trademarks, which (a) makes it easier for third parties to find it in trademark search reports, (b) provides public notice of the registration, and thus (c) potentially deters third parties from using confusingly similar marks.

(3) Use of the registration by a USPTO examining attorney as a bar to the registration of confusingly similar marks in applications filed by third parties.

(4) Use the registration as a basis for filing a trademark infringement suit in federal court, which, although more expensive than state court, means judges with more trademark experience, often faster decisions, and the ability to seek injunctive relief, actual damages, and attorneys' fees and costs.

(5) Use the registration as a basis for filing a trademark application in certain foreign countries in accordance with international treaties.

Note that many trademarks for newer businesses begin as registrations in the Supplemental Register if the mark describes a feature, purpose, or function of the goods or services for which the application is made. However, continued use and enforcement of a mark over time will allow the mark to "acquire distinctiveness" such that it may qualify for registration on the Principal Register in the future. Typically, it makes sense to revisit this issue when it is time to file your first trademark renewal, 5 years after your mark was registered on the Supplemental Register.

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