I’ll start this post by acknowledging the misleading title – rarely, if ever, does a federal trademark applicant independently decide to register its mark on the Supplemental Register in the United States. Whereas registration on the Principal Register is the “gold standard” for federal trademark applicants, the Supplemental Register offers a “second best” kind of registration, which provides some, but not a full complement, of benefits.
But before mentioning those benefits, what are the “Principal” and “Supplemental” Registers? In short, these registers together constitute the federal government’s repository of trademark registrations – essentially a long list of information pertaining to federally registered trademarks, including their owners, filing bases, etc., accessible to the general public. The registers can be searched electronically, either separately or together, on the USPTO website. (In countries outside the USA, the rough equivalent of the Principal Register is sometimes called “Part A” of the Register, and the “second best” register, “Part B.”)
Marks mature to registration on either one of these registers, and are afforded different benefits accordingly. I won’t go deep into the benefits here, because that topic is well covered elsewhere in trademark academia, but suffice it to say that the “Principal Register” is ideally where you want to be. A registration on the Principal Register constitutes prima facie evidence of the mark’s validity, the registrant’s ownership, the exclusive right to use the mark in commerce, as well as the possibility of achieving “incontestable” status, among other benefits. A Supplemental Register registration won’t provide those, but may help in other ways – the Trademark Office should still refuse registration of conflicting third-party applications based on your Supplemental Register registration, for instance. A Supplemental Register registration will also entitle you to use the “registered trademark” notice, and you can still oppose another’s application or sue in federal court based on it (although the presumptions it carries will not be as strong).
So how does an application end up on one Register or the other? Most applications are initially filed on the Principal Register (if the application doesn’t specify Supplemental, the default is Principal). Sometimes, when the mark is deemed to lack “distinctiveness” – meaning, usually, that it is a descriptive term – the Trademark Office will refuse registration and recommend amendment to the Supplemental Register. There is no obvious upside to specifying the Supplemental Register in your initial application, except perhaps for some cost-efficiency gained by avoiding a later amendment, if you are sure a refusal will issue.
A few important points to keep in mind about the Supplemental Register, though. You can only file a Supplemental Register application (or amend to the Supplemental Register, as the case may be) if your mark is in use. (Exceptions: proof of use is not required for applications based on a foreign application or registration, and applicants filing under the “Madrid Protocol” cannot file on the Supplemental Register at all). In other words, for “intent to use” applicants, you shouldn’t simply assume that if a refusal issues, you will be able to amend your application to the Supplemental Register – the refusal will permit you 6 months to do so, but if you can’t prove use in that time, you’ll have to refile.
What if you’re already using the mark, but want to wait until the last possible opportunity to amend to the Supplemental Register? Be very careful about your timing and the phrasing of your request. The Trademark Rules are clear that once the Board issues a decision on appeal, the application can no longer be amended to the Supplemental Register. This means once your case is taken on appeal, you may not be able to “hedge your bets” by including in your brief a request to amend if the appeal is not decided favorably, although cases have come out differently on that point. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (denying request in applicant’s ex parte appeal brief to amend to the Supplemental Register in the alternative); but see In re Eximius Coffee, LLC, Ser. No. 86262060 (TTAB 2016) (granting applicant’s request by temporarily restoring jurisdiction to the Examining Attorney). Moreover, “reservations of rights” to amend won’t be honored – only specific “requests” to amend, whether made independently or “in the alternative” to the Examining Attorney’s withdrawal of the refusal. See In re Integrated Embedded, Ser. No. 86140341 (TTAB 2016).
So, in sum, when “deciding” between the Principal and Supplemental Registers, there isn’t much to decide, but quite a bit to consider.
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