Supplemental Register

The Supplemental Register is a trap for the weak

If you have a trademark application pending before the United States Patent and Trademark Office, you may have received a Supplemental Register advisory.  This advisory is an option to amend your application for registration on the Supplemental Register.  But what is the Supplemental Register, and what happens if you accept this option?  Understanding the Supplemental Register first requires an understanding of trademark strength.  Then you can understand the Principal Register, the need for the Supplemental Register, and how to use this knowledge to your advantage.

A roadmap for this article:

  1. A description of trademark strength;
  2. The interface between strength and protective scope; and
  3. An explanation of the Principal and Supplemental Registers.

If you do not know what an office action is, read this post first: What is an office action?

I. Trademark Strength

Trademarks vary in conceptual strength.  Every mark falls within one of the following five categories of conceptual strength: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful.  Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).  These categories scale from weakest (generic marks) to strongest (fanciful marks).  To determine the strength of a non-fanciful mark, you must compare the mark with its associated goods and services.  Here is a rough guide for assessing where a mark falls among these categories:

Fanciful   A term that has been invented for the sole purpose of functioning as a trademark or service mark.  
Arbitrary   A known word used in an unexpected or uncommon way.  Arbitrary marks are not suggestive or descriptive of a significant ingredient, quality, or characteristic of their associated goods or services.  
Suggestive   A mark that requires imagination, thought, or perception to reach a conclusion as to the nature of the associated goods or services.  
Merely Descriptive   A mark that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the associated goods or services, or that immediately conveys knowledge of a quality, feature, function, or characteristic of those goods or services.  
Generic   A term that the relevant purchasing public understands primarily as the common or class name for the associated goods or services.  

Marks can be conceptually weak as applied to one good or service (APPLE as used in connection with apple orchard consultation services) while simultaneously being conceptually strong as applied to a different good or service (APPLE as used in connection with computers).  Fanciful marks usually need no comparison to their goods or services unless they have been overused.  They are always conceptually strong, at least initially, because they had no existence or meaning prior to their inception for trademark use.  The strength of all marks can change over time and vary by market. 

The strength of a mark defines its scope of protection.  The higher a mark is on the totem pole of conceptual strength, the broader its scope of protection.  The concept of trespass on real property is a great way to understand this form of intellectual property.  Strangers must stay far away from a house surrounded by 1,000 acres of land or risk trespassing.  They may come much closer to a house surrounded by 1 acre.  Likewise, junior third-party marks must stay far away (similarity-wise) from more senior strong marks or risk infringement.  However, the same third-party mark can nestle more closely to a more senior weak mark.  Strength determines how close.

Here are some examples of marks that fall within the five categories of conceptual strength:

Strength Mark Goods/Services
Fanciful PEPSI Soft drinks.
KODAK Printing machines.
EXXON Gasoline.
Arbitrary APPLE Computers.
OLD CROW Whiskey.
VEUVE Champagne.
Suggestive SPEEDI BAKE Frozen dough.
NOBURST Liquid antifreeze.
DRI-FOOT Antiperspirant deodorant for feet.
Merely Descriptive BED & BREAKFAST REGISTRY Lodging reservation services.
COUNTRY MUSIC ASSOCIATION Association services, namely, promoting country music entertainers and the country music recording industry.
INSTANT MESSENGER Telecommunications services and computer services related to providing real time text messages.
CASH MANAGEMENT ACCOUNT Stock brokerage services, administration of money market fund services, and providing loans against securities services.
Generic MATTRESS.COM Online mattress retail store.
COFFEE FLOUR Flour made from coffee cherry skins, pulp, and pectin.
CANDY BOUQUET Ordering services for gift packages of candy.
E-TICKET Computerized reservation and ticketing of transportation services.
ANALOG DEVICES Devices having analog capabilities.

II. Why Strength Affects Protection

The whole purpose of trademarks is to identify the source of goods or services to enable healthy competition.  Marks that are source-identifiers are referred to as being distinctive.  If a “trademark” does not identify the source of goods or services but instead identifies the goods or services themselves, it is not actually a trademark; it is just a generic or descriptive mark or word.  Here is how the Federal Circuit explains generic marks:

Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status. The reason is plain: To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.

In re Pennington Seed, Inc., 466 F.3d 1053, 1058 (Fed. Cir. 2006).  Not only does this quote show that generic marks are incapable of acting as source identifiers, it alludes to a broader reason why generic terms are not afforded trademark protection: anti-competitive term monopolization.  If trademark law allowed someone to claim exclusive ownership of a generic mark, that ownership could prevent others from legitimately and accurately describing the products or services they offer.  People would be prohibited from telling the truth, which might eliminate all hopes of competition.  In a world of digital marketing, search terms, and search engine optimization, the disastrous implications of a different result are easy to grasp.  So, generic marks can never receive trademark protection. 

Only distinctive marks may receive trademark protection.  Marks that are suggestive and stronger are always conceptually strong enough to receive trademark protection.  Their status as suggestive, arbitrary, or fanciful means they are distinctive by default—inherently distinctive—when applied to their respective goods or services.  As previously stated, generic marks are never distinctive.  But merely descriptive marks fall within a gray area.  At creation, they are not conceptually strong enough to function as trademarks.  However, they can develop “secondary meaning,” which is an acquired distinctiveness.

Secondary meaning is the rite of passage for merely descriptive trademarks.  Development of secondary meaning indicates those trademarks have graduated from calling to a consumer’s mind certain goods or services themselves, on the one hand, to calling to a consumer’s mind the source of those goods or services, on the other hand.  This additional meaning—the source of a good or service—is therefore secondary to the initial meaning of those marks, hence the denomination.  Only upon developing secondary meaning can a merely descriptive mark receive trademark protection.  Read this post for an entertaining way to create secondary meaning: A double entendre might make your trademark protectable.

III. The Principal & Supplemental Registers

The conceptual strength of your mark is what determines whether you can achieve registration on the Principal Register or the Supplemental Register, or not at all.  Marks that are suggestive or stronger are eligible for protection on the Principal Register.  15 U.S.C. § 1052.  Registration on the Principal Register is always what people want when they pursue a trademark registration, and it is the type of registration that affords several of the oft-named benefits of trademark registration: nationwide rights to the trademark, a presumption of ownership of the trademark, import controls against infringing articles, etc.  A trademark registration on the Principal Register is the pinnacle. 

The Supplemental Register is for “[a]ll marks capable of distinguishing applicant’s goods or services and not registrable on the principal register.”  15 U.S.C. § 1091.  Non-distinctive merely descriptive marks cannot be registered on the Principal Register.  Thus, if your trademark is merely descriptive and it has not achieved secondary meaning, the only registration it can get is on the Supplemental Register.  The result is that you do not get the aforementioned benefits, and others, that a trademark registration on the Principal Register would get.  Some of the benefits you would get from a registration on the Supplemental Register are: the ability to use the federal trademark registration symbol with your mark (®), potential citation of your registration in office action refusals against future similar marks, and federal jurisdiction in a trademark infringement action. 

Perhaps the most meaningful drawback of registration on the Supplemental Register is that those registrations constitute admissions that your trademark is merely descriptive without secondary meaning.  That is an admission that your mark is weak, and it is why an applicant faced with a Supplemental Register advisory should proceed with care.  Examining attorneys are humans, and all humans can make mistakes.  If an examining attorney mistakenly classified your suggestive mark as merely descriptive and you accept registration on the Supplemental Register, your admission weakens the scope of protection of your mark.  Maybe you would be better off proving that your mark has secondary meaning, arguing that it is inherently distinctive, or even avoiding registration altogether (at least for the time being).  This is where a good trademark attorney can provide crucial assistance.

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Congratulations.  You are now familiar with the conceptual strength of trademarks and how it gives rise to the Supplemental Register.  The only thing left is to choose how to respond to a Supplemental Register advisory.  Whatever your decision, make it thoughtfully.  You will need sound strategy, knowledge of your goals, and trademark law experience to shape an informed, successful outcome.  We can help.

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