A trademark is the most valuable asset owned by many businesses. The design, features, source code, or formulation of a product or service may change regularly and even predictably. Without a concise representation of the source, history or reputation of that product or service – as distilled to the mark used to brand it – such changes would make it immeasurably difficult, if not impossible, for a business to maintain demand. Businesses with particularly successful products or services spend considerable amounts of time, effort and money establishing and protecting their associated trademarks, and for good reason. Business owners who fail to pay sufficient attention to the protection of their companies’ marks face a number of what should be unacceptable risks, including the inability to register or use those marks at a future date, the dilution of the market’s recognition of their products or services, and, in some cases, legal fees and penalties arising from trademark claims made against them by other businesses. It is therefore important for all business owners to have an understanding of several basic principles of trademark law, including registration with the U.S. Patent & Trademark Office (USPTO), what constitutes improper use, and what remedies are available for infringement.
In some cases where a business’ trademark is not eligible for registration on the USPTO’s principal register, it is often advisable for the business to register the mark on the supplemental register instead. Marks on the supplemental register do not enjoy all of the statutory protections afforded to marks on the principal register. However, their owners are eligible to file lawsuits for trademark infringement under U.S. federal law. In addition, by treaty, many foreign nations require registration of a mark in its owner’s home nation before they will allow registration in their own records. Therefore, registration on the supplemental register may be a necessary step to securing trademark rights outside the U.S., where many foreign states have less stringent requirements for full protection. Finally, continuous registration on the supplemental register can be helpful to a business seeking primary registration for a mark that is asserted to have acquired secondary meaning through continuous, exclusive use.
To be eligible for registration on the supplemental register, a mark must be currently in use and “must be capable of distinguishing the applicant’s goods or services,” but it need not have the inherent distinctiveness required in order to avoid being deemed “merely descriptive” and, thus, ineligible for principal registration. However, many of the disqualifying criteria for registration on the principal register still apply to the supplemental register, including, for example, the presence of any deceptive or fraudulent elements or the unauthorized use of a third person’s name or likeness. Registrations on the supplemental register also are subject to the same requirements pertaining to duration and renewal that apply to registrations on the principal register.
Whether and to what extent supplemental registration represents a good value proposition for your business is a question best explored with a knowledgeable trademark attorney.