What is the supplemental trademark register? (And why should I care?)

Attorney Michael Lasky discusses the supplemental trademark register.

Contact Michael Lasky

Email: [email protected]

Phone: (404) 441-1750 or (952) 253-4106

Transcript:

Hi, my name is Michael Lasky and if you’re watching this video, it is probable that you have a trademark application that has been rejected by the trademark office and you want to know what to do about it. And if the rejection is on the basis that the trademark office says, you don’t actually have a trademark and we’re not going to give you registration then you need to know what the supplemental register is and how it can help you.

As you know, there’s a process to registering a trademark you file the application and it gets examined and one of the examination steps is to determine if you have a trademark. Not just is it confusingly similar to another trademark but whether it’s a trademark at all. Take a look at the far side here where we have the Battery Store. What do they sell batteries; therefore, it cannot be a trademark because it merely describes what it is. It’s generic. Ketchup for ketchup is not a trademark.

On the other end, we have very, very strong trademarks and there’s a continuum in between. And there’s a place called descriptive, something like the Weather Channel what do they do, weather forecasting, but if it was well known enough, it could still be a trademark, which actually is what happened with Weather Channel. And you see the Cooking Channel and American Airlines and Food and all these other that are very weak trademarks but they’re very, very famous. So the trademark office will reject a trademark that describes the product and also any attribute of the product that’s going to come up in a minute.

So if it’s rejected what are your choices? Here’s an example, for example of various trademarks that are rejected, Sun Blocker for plant food that’s an attribute of the plant food it probably has a sun blocking attribute. Here’s one, Minnesota, M-I-N-N for beer made in Minnesota that’s also an attribute. And then you have things like Same Day Appliance Repair very descriptive. Can they be trademarks? Maybe. If the trademark office will allow it, they will permit registration on what’s called the supplemental register it’s different from what we call the principle register, which is the regular trademark. It’s kind of like trademark lite but it’s still a pretty good thing.

If your trademark is descriptive, in other words it’s really weak, but with enough advertising it is capable of becoming recognized as a trademark like the Weather Channel or if it’s a surname, a last name, or if it’s geographic for example, Idaho for potatoes is geographic and therefore not registerable it can be registered on the supplemental register. What you get is different. In the principle registration, you get the presumption that the trademark is valid. You would think that would be a given but in the supplemental register it’s not. You get a trademark registration certificate it looks like a real one but if you want to enforce it, you have to prove that you actually have a trademark. Still valuable and you get some of these other benefits.

So what to do? So here’s the example of Minnesota or M-I-N-N as a trademark for beer it is descriptive geographically if it came from Minnesota. And by the way, if it didn’t come from Minnesota it would be geographically misdescriptive and therefore, also not registrable. So if you can get it registered on the supplemental register it then become a block to others. And why should you care about this is if you can get a registration, you’re halfway home; even a limited registration.

So here we are if you want to avoid this problem in the first place, obviously, do no pick trademarks that are going to get rejected because of descriptiveness. But if you’re already there then you should try and get on the supplemental register. And here’s the bonus that makes it worth it. If you get a trademark registered on the supplemental register and you use it continuously for five years you can go back to the trademark office and say look, I’ve used it for five years it is now sufficiently well recognized that it should be entitled to the principle of full registration and in most cases, you can get it. So it’s a stepping stone to get where you want to go, it puts you on the trademark register so people can find you and hopefully not infringe it’s not a bad outcome. That’s what the supplemental register does.

I hope this was helpful. Thank you.