“Descriptiveness” is one of the most often cited reasons for refusal of a trademark application. A trademark must identify the source of the product, rather than just describe it, in order to be registered with the United States Patent and Trademark Office (USPTO). What many don’t realize, however, is that there is another option for registering a descriptive mark: the “Supplemental Register.”
The majority of trademarks are placed on the USPTO’s “Principal Register,” under which the full gamut of trademark protection is provided. But the USPTO also maintains a “Supplemental Register,” on which marks which would otherwise be refused as too descriptive can be provided with tailored protections, leaving open the possibility of qualifying for and moving to the Principal Register at a later date.
The Supplemental Register doesn’t offer all of the perks of the Principal Register, but it is far better than no registration at all. Marks listed on the Supplemental Register can be advertised with the registration symbol and can be used as a basis to bar subsequent applications from owners of similar marks. In addition, the Supplemental Register provides some legal remedies for disputes involving the mark.
What the Supplemental Register doesn’t provide is the automatic presumption of ownership or validity of the mark, or the exclusive right to use the mark in a contest over the mark. And a mark listed on the Supplemental Register can never become “incontestable,” a benefit bestowed upon marks that meet certain requirements after being on the Principal Register for at least five years.
One thing is certain, though: Where the only other option is no protection at all, the Supplemental Register is a great option. If you’d like to explore options for obtaining trademark protections for your business, please feel free to give us a call at (248) 477-6300. We would love to help.
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