The Supplemental Register is used by those seeking registration for a mark considered too descriptive for the Principal Register. Once the mark has acquired sufficient distinctiveness through use (at least 5 years) it can then be transferred to the Principal Register. An applicant cannot file an “intent to use” application to register a trademark on the supplemental register.
Marks registered on the Supplemental Register lack some benefits obtained by registration on the Principal Register, for instance:
- there’s no resulting constructive notice of a registrant’s ownership claim;
- registration is not prima facie evidence, by itself, of exclusive right to use the mark;
- registration does not become incontestable in 5 years; and
- U.S. Customs & Border Protection will not stop the importation of infringing goods.
Marks registered on the Supplemental Register have many benefits, including:
- use of the federal trademark registration symbol ®;
- is a bar to registration of a later filed application if the mark & goods are confusingly similar;
- serves as the basis for an international application based on U.S. rights;
- immunity from opposition challenges during the registration process (but are subject to cancellation petitions by any person who claims to be damaged by the registration); and
- the registrant can bring a suit for infringement (& claims of unfair competition) in federal (rather than state) court, and ownership & infringement issues are governed by federal (rather than state) law.