A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register


You might remember from Tore DeBella’s post on deciding between Principal and Supplemental Register registration that the Principal Register is the place to be if you’re a trademark owner. But what if the best you could do was secure a Supplemental Register, or “second best,” kind of registration?

Don’t despair!

It might be possible to find your way to the Principal Register even if your mark initially landed on the Supplemental Register.  If a mark has acquired distinctiveness – or significance as a brand name – while on the Supplemental Register, it may become eligible for registration on the Principal Register.  We’ve noticed a few common misconceptions about this process.  Below, we do our best to debunk the “myths” we most often hear:

MYTH:  It’s possible to amend a registration on the Supplemental Register to the Principal Register.

While we can amend a Principal Register application to the Supplemental Register, going the opposite direction doesn’t work the same way.  Instead, the owner of a registration on the Supplemental Register needs to file a new application for the same mark on the Principal Register.

MYTH:  Filing a trademark application on the Supplemental Register is essentially admitting that the mark hasn’t acquired trademark significance, so there’s no reason to bother with a new Principal Register application.

The fact that a mark was initially registered on the Supplemental Register should not prevent the owner from showing that the mark has acquired brand significance and now deserves to be registered on the Principal Register – so feel free to file away!

MYTH:  A trademark owner can re-file for registration on the Principal Register only after its mark has been registered on the Supplemental Register for 5 years.

Actually, a trademark owner can file a new Principal Register application after its mark has been used for 5 years.  The “five years’ use” anniversary may arrive sooner than the five-year anniversary of registration on the Supplemental Register, so docket carefully!  Better yet: a trademark owner doesn’t have to wait for 5 years’ use to pass if it’s able to show that the mark has acquired brand significance before then.

MYTH:  To register its mark on the Principal Register, a trademark owner will only need to show that its mark has been used substantially exclusively and continuously for the past 5 years.

Not always.  While the USPTO may accept 5 years of use as proof that the mark has acquired brand significance, it may be necessary to provide the USPTO with other evidence, such as promotional materials, sales and advertising figures, and statements from customers attesting to the mark’s distinctiveness.

MYTH:  Once a new application is filed on the Principal Register, you should immediately allow the Supplemental Register registration to lapse.

Actually, while the new application is pending, consider keeping the Supplemental Register registration alive.  If your new application is refused and you don’t want to invest in presenting arguments, you can fall back on your Supplemental Register registration.

Who said there’s no such thing as second chances?

This entry was posted in Brand Protection, Trademark Portfolio Management, Trademark Prosecution, USPTO and tagged , , , by .
Date Published: December 28, 2016
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.