The Supplemental Register, explained

Two registers

The Trademark Act creates two registers. The Principal Register, in Sections 1 to 22 of the Act, is for marks that are distinctive: names that already identify one company's goods, either because they were born that way (Acmeflow, Loopwell) or because years of use have made them so. The Supplemental Register, in Sections 23 to 28, is for marks that are 'capable of distinguishing' the applicant's goods or services but do not yet do so.

In practice that means descriptive terms, surnames, geographic names, a color or a product shape that has not yet come to mean one maker, and other matter the USPTO would refuse from the Principal Register under Section 2(e). The name Daily Habit Log for a habit-tracking app cannot register on the Principal Register on day one; it can register on the Supplemental Register, because a term like that is capable of becoming a brand even though it is not one yet.

What cannot go on the Supplemental Register is anything incapable of ever being a mark: a generic term, which is the name of the product itself, and matter barred by the other parts of Section 2, such as a mark confusingly similar to a registered one, a deceptive term, or a design that is functional. The glossary has both registers in a sentence each.

What a Supplemental Register registration gives

• The ® symbol. A registration on either register is a federal registration, and the notice of registration may be used with the mark for the goods and services covered. TM versus ® explains the rules for the symbol.
• A place in the USPTO's records. The mark appears in every search of federal records, including the ones competitors and their advisers run before choosing a name, and the examining attorney cites it against later applications for confusingly similar marks in related goods, just as a Principal Register registration is cited.
• Federal court. The owner may sue for infringement in federal court under the Trademark Act, and the registration establishes federal jurisdiction.
• A basis for filing abroad. A registration on the Supplemental Register can serve as the home registration on which an international application under the Madrid Protocol is based. Protecting a name outside the United States covers the route.
• An asset with a registration number. It can be assigned, licensed and listed; marketplace brand programs and platform complaint forms ask for a registration number.

The fee is the same as for the Principal Register: the USPTO application fee of $350 per class, and the same maintenance filings later. A registration on the Supplemental Register lasts as long as a Principal one, with a Section 8 declaration between the fifth and sixth years and a renewal every ten years.

What it does not give

Section 26 of the Act lists the parts of the statute that do not apply to the Supplemental Register. Translated, a registration there does not carry:

• The presumptions. A Principal Register registration is prima facie evidence that the mark is valid, that you own it and that you have the exclusive right to use it. A Supplemental registration proves none of that; in a dispute you prove your rights the way an unregistered owner does.
• Nationwide priority from the filing date. On the Principal Register, the filing date counts as first use everywhere in the country. On the Supplemental Register your rights reach where you have actually used the mark, as common-law rights do.
• Constructive notice. Later adopters of a Principal Register mark are deemed to know about it. The Supplemental Register gives no such notice.
• Incontestability. A Principal Register registration can become incontestable after five years; a Supplemental one never can, and it can be challenged in a cancellation proceeding at any time, on any ground, for as long as it lasts.
• Publication and opposition. Applications for the Supplemental Register are not published for opposition; they register after examination and are published in the Official Gazette once registered. The only way for another party to object is to petition to cancel.
• Customs recordation. The registration cannot be recorded with U.S. Customs and Border Protection to stop infringing imports at the border.
• An intent-to-use basis. An application filed on intent to use cannot be placed on the Supplemental Register until the applicant has filed an allegation of use with a specimen.

How a mark gets there

There are two routes, and the second is much more common.

You can apply for the Supplemental Register directly, if the mark is already in use and you know it is descriptive or a surname. Few applicants do, because the Principal Register is worth trying for first.

Or you can amend. When the examining attorney refuses the mark under Section 2(e), as merely descriptive or as primarily a surname, the office action usually offers the amendment as one of the ways to respond. The response asks that the application be amended to the Supplemental Register; if the mark is otherwise registrable and in use, the refusal is withdrawn and the application proceeds to registration without publication.

One rule to know before amending: an intent-to-use application that is amended to the Supplemental Register after an Amendment to Allege Use takes the date of that allegation as its effective filing date, not the original filing date. For a use-based application the filing date is unchanged. If your place in the queue matters, that difference is worth a conversation before the amendment is filed.

Moving to the Principal Register later

A Supplemental Register registration does not convert or upgrade. When the mark has acquired distinctiveness, you file a new application for the Principal Register, claiming distinctiveness under Section 2(f), and it is examined afresh. In outline:

1. Use the mark continuously and, as far as you can, exclusively. Five years of substantially exclusive and continuous use is the statute's benchmark, and the Supplemental registration helps here by keeping confusingly similar names off the register while your use builds.
2. Keep the evidence as you go: sales by year, advertising spend and samples, press coverage, dated specimens, and anything that shows customers treating the name as yours.
3. File a new Principal Register application claiming acquired distinctiveness under Section 2(f), with a declaration of five years' use and whatever further evidence the descriptiveness of the term demands. The prior Supplemental registration is not itself evidence of distinctiveness; the use is.
4. Keep the Supplemental registration alive until the new one issues, then decide whether to maintain both or let the older one lapse at its next deadline.

Whether to take the Supplemental Register now, argue for the Principal Register now, or rename is a judgment about the name, the market and how long you have been trading. It is exactly the kind of question the free call with your attorney is for.

Been offered the Supplemental Register in an office action, or expecting a descriptiveness refusal? Talk it through before the response is due. Book a free attorney call

Questions about this topic

Can I use the ® symbol with a Supplemental Register registration?

Yes. The ® symbol signifies registration with the USPTO, and a registration on the Supplemental Register is a federal registration. Use it with the goods and services the registration covers, and not before the registration certificate issues. The symbol does not tell the public which register the mark is on, and few people ask.

Is a Supplemental Register registration worth the fee?

For a descriptive name you intend to keep, usually. It costs the same USPTO fee as a Principal Register application, puts the mark in the records every competitor searches, lets you use ®, blocks later confusingly similar applications and gives you a registration number for platforms that ask for one, while your use builds toward a Principal Register claim.

Can an intent-to-use application register on the Supplemental Register?

Not until the mark is in use. The Act excludes the intent-to-use basis from the Supplemental Register, so an intent-to-use applicant must first file an Amendment to Allege Use with a specimen, and then amend to the Supplemental Register. The effective filing date becomes the date of the allegation of use rather than the original filing date.

Related guides

• Merely descriptive: the refusal that catches good names: What a Section 2(e)(1) merely descriptive refusal means, where suggestive ends, acquired distinctiveness in outline, and how the attorney answers it.
• TM versus ®: which symbol you may use, and when: TM, SM and ® explained: who may use each symbol, why ® is reserved for USPTO-registered marks, what misuse can cost, and where to place the symbol.
• Trademark maintenance and renewal: keeping your registration alive: The Section 8, 9 and 15 filings that keep a U.S. trademark registration alive: when they are due, what the USPTO charges, grace periods and audits.

Contact

Trademarky, LLC, 78 SW 7th St, 5th FL, Miami, FL 33130. (305) 562-6800, hello@trademarky.io. Monday to Friday, 9am to 5pm ET. Available by appointment.

This free check is an AI-assisted preliminary screening against known U.S. trademark records. It is not a comprehensive clearance search and not legal advice. Only a licensed attorney can advise you on whether to file.