When securing a Federal trademark for a business or product everyone must go through the the United States Patent and Trademark Office (USPTO). When doing so the hope is to come out with a secured trademark in the principal register, however for some, Plan B might be the way to go when Plan A fails.
The Principal register is most commonly where trademarks are registered. These trademarks are distinctive and clearly set apart the corresponding product or business. Such trademarks are not merely descriptive and have satisfied the qualifications set by the USPTO. At times, certain trademarks, while almost ‘hitting the mark’ just don’t quite reach it. It is at these moments that the USPTO will recommend these “trademarks with potential,” to the supplemental register instead of denying registration altogether.
The supplemental register consists of trademarks that have the potential of reaching distinctive effectiveness and just need an extra something to drive out of the purely descriptive phase. While not the final goal, accepting amendment to the supplemental register does present advantages. You may still bring forth suites of infringement in federal court. Your mark can be sighted by an examiner against similar marks looking to be registered and by being listed on the supplemental register your mark gains priority over other marks seeking registration at a later date. Another perk of accepting supplemental registration is the legality of using the ® mark rather than the ™ label. This grants you federal protection instead of the basic protection of common law. Furthermore it grants a more stable and legitimate aspect to your trademark. Finally, after five years on the supplemental registration list, reapplication for principal registration is granted and having been on the supplemental list helps prove that your trade mark has gained distinctiveness. This will help secure your principal registration.
A few negative aspects of the supplemental register is that despite its step upward, it is not official. Supplemental registration does not grant exclusive rights to the registered owner. This means that the Department of Treasury cannot stop importation of infringement into the US, the mark does not automatically gain incontestability after five years and the mark is not truly valid until gaining principal registration.
Despite these few downfalls, having the protections the supplemental register provides, over no federal protections at all, may be a better path to follow. When Plan A fails, this Plan B is a good way to go to begin the securing and protection of your brand.