The U.S. Supplemental Trademark Register "Second Best?" Perhaps, But Often Good Enough - Lucas & Mercanti, LLP

The U.S. Supplemental Trademark Register
“Second Best?” Perhaps, But Often Good Enough

By James R. Major, D.Phil.

Any of us would be proud to come in second to Usain Bolt, who won an unprecedented third gold medal in the 100-meter event at the Rio de Janeiro Olympics on August 14.  A few weeks later, in a decision dated September 8, 2016, the Trademark Trial and Appeal Board (the “Board”) demonstrated to trademark owners that having their marks registered on the Supplemental Register – coming in second in some peoples’ minds – is nothing to feel bad about either.

Uniquely, the U.S. has two trademark registers: the Principal Register, on which the strongest, most distinctive marks are listed, and the Supplemental Register, on which weaker, descriptive marks are listed.

To obtain registration on either, the trademark must meet certain statutory requirements.  In contrast to the Principal Register, however, a trademark need not be “distinctive” to be registered on the Supplemental Register.  For example, ADAM’S APPLES would not be distinctive if Adam adopted the trademark in connection with apples because it is merely descriptive of apples originating from Adam.  So Adam’s trademark would be more difficult to enforce because, unlike trademarks registered on the Principal Register, registration of a trademark on the Supplemental Register provides no rebuttable presumption of distinctiveness and no rebuttable presumption that the registrant owns the trademark: two powerful advantages.  So, what’s the point of having a registration on the Supplemental Register, or to be second best?

For one, a registration on the Supplemental Register does provide protection.  By statute, the Trademark Office must base all “confusing similarity” refusals on U.S. trademark registrations.  It cannot refuse registration based on an unregistered trademark.  Consequently, registrations on the Supplemental Register are still registrations for this purpose.  This was critical in In re Morinaga Nyugyo Kabushiki Kaisha, Appeal No. 86/338,392 (T.T.A.B. Sept. 8, 2016) (precedential) (opinion linked here).

In Morinaga, the applicant sought to register a logo bearing the words “MT. RAINIER THE MOUNTAIN OF SEATTLE EXPRESSO & MILK” in connection with expresso coffee and milk.  The Examining Attorney refused registration of the logo as being confusingly similar to MOUNT RAINIER COFFEE COMPANY, registered on the Supplemental Register in connection with coffee.  The applicant argued that MOUNT RAINIER COFFEE COMPANY was “entitled to only a narrow scope of protection” because it was only registered on the Supplemental Register.  However, the Board affirmed the Examining Attorney’s refusal, holding that registration on the Supplemental Register was sufficient to sustain the refusal and finding that the two trademarks were “significantly similar.”

Morinaga neatly demonstrates one advantage of registration on the Supplemental Register: registration of MOUNT RAINIER COFFEE COMPANY defeated registration of the applicant’s trademark.  In this case, the applicant would likely have to incur the costs associated with trying to cancel the prior registration in order to register their trademark.  Moreover, the grounds for cancellation would have to be more than an allegation of mere descriptiveness, as trademarks on the Supplemental Register are generally presumed to be descriptive.

There are further advantages of registration on the Supplemental Register, including the right to use the “®” symbol and the ability to defeat another applicant’s claim for statutory acquired distinctiveness.  This potential rejection may dissuade a competitor from pursuing registration of a potentially confusingly or significantly similar sounding mark.  Placing a mark on the supplemental register also provides strong evidence in favor of a subsequent claim of acquired distinctiveness, or what is sometimes referred to as secondary meaning.  Continuous use of such a trademark for five years provides a path to placement on the Principal Register, which would entitle the trademark owner to all the benefits associated with such registrations.

Dr. Major represents clients in the biotechnology, chemical and pharmaceutical fields. Reach him at jmajor@lmiplaw.com or at (646) 783-6757. You may also e-mail the firm at info@lmiplaw.com.

This article may be deemed advertising under applicable state laws. We write it to provide general information and it is not intended to be, nor should it be taken to be, legal advice.

About Lucas & Mercanti, LLP: The firm provides comprehensive intellectual property legal services to clients in various fields, including pharmaceuticals, chemicals, electronics, medical devices, telecommunications, manufacturing, and life sciences. We represent start-ups, mid-size companies, multi-national conglomerates, and academic and research institutions, contributing to their success by understanding the science behind their innovations, by representing them proactively, and by being efficient and easy to work with.

Leave a Reply

Your email address will not be published. Required fields are marked *