The Supplemental Register is the secondary register of trademarks maintained by the United States Patent and Trademark Office. It was established to allow the domestic registration of trademarks that do not meet all the requirements for registration on the Principal Register, so that the holders of such a mark could register it in another country. This is necessary because under the Paris Convention for the Protection of Industrial Property, foreign registration is not permitted in the absence of domestic registration, and the trademark laws of countries outside the United States often have less stringent registration requirements for marks.
The only requirements for registration on the Supplemental Register is that a mark must be in commercial use and must be capable of distinguishing the owner’s goods or services (not that it actually serves such a function). Registration on the Supplemental Register does not confer any rights beyond those provided by common law. Marks registered on the Supplemental Register are not subject to opposition proceedings, but they may be canceled anytime by a court. Holders of such marks are still permitted to sue for trademark infringement.
The primary differences between a registration on the Principal Register and the Supplemental Register are the following:
1. While a Principal Registration is prima facie evidence of the registrant’s exclusive right to use of the mark, a Supplemental Registration has no such evidentiary effect.
2. While a Principal Registration is constructive notice of claim of ownership so as to eliminate a defense of good faith, a Supplemental Registration has no such effect.
3. While a Principal Registration may become incontestable after five (5) years of registration, a Supplemental Registration can never achieve that evidentiary status.
4. Registration on the Supplemental Register cannot be used as a basis for the Department of the Treasury to stop importations of infringing products into the United States.
5. In litigation where a plaintiff has a Supplemental Registration, the mark will not, prima facie, receive protection as a valid trademark, for its very presence on the Supplemental Register indicates a preliminary determination that the mark is not distinctive of the applicant’s goods.
On the other hand, the advantages of a Supplemental Registration, as opposed to no registration at all, are the following:
1. Suit for infringement of the registered mark can be brought in federal court, along with a related claim of unfair competition. Even though a Supplemental Registration creates no substantive rights, questions of validity, ownership and infringement of Supplemental Registrations are governed by federal law.
2. Another benefit of a Supplemental Registration is that one’s Supplemental Registration is on file in the Patent and Trademark Office and can be cited ex parte by the USPTO against another’s later application to register a substantially similar mark, even on the Principal Register. However, the circumstances in which a Supplemental Registration will bar a later-filed application are limited.
3. The registrant is entitled to use a Federal trademark registration notice such as the “®” symbol.
If a mark on the Supplemental Register has been in use for five (5) consecutive years, it is possible to reapply for registration of the mark on the Principal Register.