When trademark attorneys talk about registering trademarks (not “trademarking”), they generally mean registering a trademark on the Principal Register. We all aspire to have an application show up here, but sadly, we aren’t always so successful. There is another, seedy, underworld of trademark registration, where those marks that couldn’t quite make it to the Principal Register go: the Supplemental Register.
Ok, the Supplemental Register isn’t so bad. It is a sort of trademarky-Purgatory, a place where marks sit until they earn the graces to become part of the Principal Register. Those graces come in the form of secondary meaning, or acquired distinctiveness. Marks that are registered on the Supplemental Register include geographic terms, surnames, and descriptive marks: ones that do not signal to the consumer source of the product. They lack that little bit of distinctiveness that separates them from “true” trademarks, which indicate the source of the product or service. However, marks on the Supplemental Register can earn secondary meaning, and when they do, they become eligible for registration on the Principal Register.
Another difference between the Principal and Supplemental Registers is that there is no opposition proceeding for marks placed on the Supplemental Register. Those marks are never published, and thus, if a third party wishes to remove the mark, it must wait for a cancellation proceeding. However, if the mark is moved to the Principal Register by way of filing a new application, then it will be published and an opposition is possible.
The Supplemental Register offers a number of benefits. Marks registered there can be the basis for a federal lawsuit (common law trademarks cannot). Registration also can provide the platform for international trademark applications. Registration on the Supplemental Register blocks applied-for marks that are similar to the registered mark. And of course, the Supplemental Registers allows mark owners to use that little ® that they so often want.