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Supplemental Registration – Pros & Cons – Online Retailers

Anthony Cartee

Posted By:
August 17, 2020

Law Blog

Pitfalls & Benefits of Owning a Supplemental Registration it you are an Online Retailer.

Supplemental Registration - Pros & Cons - Online RetailersSupplemental Registration – The United States has two trademark registers: the Principal Register and the Supplemental Register. Online retailers, most notably Amazon’s brand registry, have primarily given preference to the Principal Register. This is because registration on the Principal Register affords all rights and responsibilities available to trademark owners. To online retailers, the Supplemental Register is a sort of holding ground for trademarks that the U.S. Trademark Office does not believe function as trademarks yet.

Think of the Supplemental Register as a holding room for marks while they are in the process of acquiring distinctiveness. The Principal Register provides protection for only “distinctive” trademarks, and a mark is considered to be distinctive if it is unique or distinctive to a business in consumers’ minds. If your mark is neither unique nor distinctive in consumers’ minds, it may be eligible for the Supplemental Register which provides protection for only “nondistinctive” and merely descriptive trademarks. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

There are some significant disadvantages of registering a trademark on the Supplemental Register. As opposed to the Principal Register, you do not have the presumption of federal ownership under the Supplemental Register. This means that in a lawsuit, the opposing party and the court can assume that your mark is still descriptive, so the burden is on the owner of the mark to prove that it has trademark significance. In contrast, as a trademark owner under the Principal Register, you are the presumed owner of that mark in all 50 states and the onus would be on the other party to prove that you are not the owner in a lawsuit. Moreover, unlike on the Supplemental Register, marks registered on the Principal Register are automatically considered to be valid. This presumption of validity is very useful if you are involved in a lawsuit since it is up to the opposing party to prove that your mark is not valid. Therefore, it is much more difficult to win a lawsuit from a trademark perspective if you just have a Supplemental Register registration.

You cannot file a trademark application seeking registration on the Supplemental Register on an intent-to-use basis as you can on the Principal Register. That means the mark has to be in use in interstate commerce in order to be registered on the Supplemental Register. Also, a Supplemental Registration cannot become incontestable as it can under a Principal Registration. An incontestable mark is stronger because such status limits the ways that the validity of the trademark registration can be attacked.

Given the disadvantages with the Supplemental Register, why would you want to amend your application to the Supplemental Register if denied Principal Registration? First off, the Supplemental Register also gives you the legal right to use the federally registered trademark symbol (the encircled “R”) to put others on notice of your mark’s federal registration. This will put the public on notice that your mark is registered and that as a serious business, you value your intellectual property. It also prevents others from claiming innocent infringement if you need to sue someone for infringing on your trademark in the future. A Supplemental Registration will also allow for a lawsuit for trademark infringement to be brought in federal court, just as a principal registered mark would. Under the Supplemental Register, third parties cannot register a confusingly similar trademark on the Principal or the Supplemental Register.

It is also important to note that registration on the Supplemental Register does not preclude later registration on the Principal Register if the mark becomes eligible for such registration. Registration on the Supplemental Register will provide the option to refile a trademark application and request registration on the Principal Register on a later date, usually after five years of substantial and exclusive use of the mark in commerce to show acquired distinctiveness.

Of course, these are just some of the advantages and disadvantages of each register. It is imperative that applicants and registrants are fully aware of the distinctions and different rights of each one. At Cartee, LC, we will work with you to come up with a strategy that will give you the greatest amount of protection for your brand. If you have any questions or are facing any issues related to the topic discussed above, we would be happy to assist.

Contact Cartee, LC Today

If you find yourself with questions about registration on the Supplemental Register, Trademark, Copyright or Intelectual Property issues, contact Cartee, LC at (714) 942-2225 and reach out to Anthony Cartee and his team.

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