Recommended Reading: LaLonde and Gilson, "The United States Supplemental Register: Solace, Substance, or Just Extinct?"
Anne Gilson LaLonde and Jerome Gilson "attempt to unravel the mysteries of the supplemental register" in "The United States Supplemental Register: Solace, Substance, or Just Extinct?", 103 TMR 828 (2013). Those of us who see a supplemental registration as a last resort, better than nothing, a minor league registration, will have our beliefs confirmed by this exploration of "what can and cannot be registered, what motivated the creation of this second-cousin register, and what advantages and disadvantages a supplemental registration brings its owner."
Registration on the Supplemental Register creates no substantive rights. Nonetheless, a supplemental registration can serve to block registration of other marks on the principal register, it permits the owner to us the ® symbol adjacent the mark, and it may stop identical domain names from being registered. [But is a mark registered on the supplemental register really a mark? Or would it, the authors ask, be better referred to as a "potential mark, contingent mark, non-mark, anti-mark, faux-mark or pseudo mark"?] Moreover, a supplemental registration provides federal jurisdiction over infringement actions.
The primary disadvantage of a supplemental registration, according to the authors, is the accompanying admission that the subject "mark" was descriptive (not inherently distinctive) at the time of registration. Moreover, unlike a principal registration, a supplemental registration does not enjoy the statutory presumptions of validity, ownership, and exclusive right to use. It does not provide evidence of priority of use or nationwide constructive notice of registrant's claim of ownership. It cannot become incontestable, and it does not help in stopping importation of counterfeit or infringing goods.
A few more tidbits: A foreign trademark owners may obtain a supplemental registration under Section 44 without use of the mark. [A mark registered on the supplemental register with no use in the United States is a really weak mark! - ed.]. However. a foreign applicant seeking an extension of protection under the Madrid Protocol cannot obtain registration on the supplemental register. A supplemental registration owned by a U.S. citizen may serve as the basis for foreign registration.
Should the supplemental register be abolished? The authors state that, if they were drafting a United States trademark law today, they would exclude it. "Without the current register, it would never occur to legislators - and properly so - to have a database of non-trademarks." But it is unlikely that abolition of the supplemental register will occur, since no one seems to pay much attention to it. [Only about 3.6% of all registrations reside on the supplemental register].
Still, the authors say, there is room for improvement. First, the PTO should be prohibited from citing supplemental registration against principal register applications under Section 2(d). Second, the Act should provide for oppositions to applications for supplemental registration, since there is no longer any need to expedite such applications to enable foreign registration. And third, owners of supplemental registrations should not be allowed to use the ® symbol, which misleads the public by indicating that trademark rights exist when there are none.
Interesting ideas, but I wouldn't hold my breath awaiting their implementation.
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Text copyright John L. Welch 2013.