MISSY MEYER’S SNARKY MUSINGS ABOUT TRADEMARKS, COPYRIGHT, LICENSING, AND OTHER IP!

WTF Are the USPTO’s Principal and Supplemental Registers?

I’ve seen a number of questions lately surrounding trademarks that are registered on the Supplemental Register, and there’s a lot of confusion over what a supplemental trademark actually IS, as compared to a principal (or “regular”) trademark. So let’s chat!

Note: this discussion applies exclusively to the United States of America. Other nations may have different rules, regulations, and definitions. I am not a lawyer, nor is this legal advice.

 

What is a trademark?

First off, let’s clarify what exactly a trademark is, before we dig deeper into specific types of trademarks.

A trademark is a type of intellectual property, which serves as an indicator of the source of goods or services. The easiest way to remember its purpose is just to split the word in half and then swap the two parts: a trademark is the mark under which you trade. Because it indicates the source of a product, customers can be confident that when they’re buying items with that mark on them, they’re buying from the brand they intended to buy from.

(You can do the same cut-and-swap with copyright, by the way! It covers the right to copy a creative work. As the owner of that work, you get to say who can make a copy of your stuff. [And by extension, who can sell those copies.] Usually you’re the only one who can make those copies, but you can also license out the rights to make and sell copies.)

Trademarks are often brand names, logos, catchphrases, and slogans. But they can also be designs, symbols, and even colors, smells, or sounds! (There are only 284 registered “non-sensory” marks, including things like the “Red Robin, yummmm” jingle, the distinctive scent of Play-Doh, and Homer Simpson shouting “D’oh!

Trademarks don’t necessarily need to be registered with the United States Patent and Trademark Office (the USPTO); you can use your brand name or slogan or logo without registration. But by registering your mark, you get a big bunch of protections, including much stronger abilities to enforce your rights in the courts.

 

Registering your trademark

Now that we’re clear on what a trademark is, let’s talk about registering them. (I’m simplifying the hell out of the process here, don’t @ me.)

In the USA, in order to register a trademark, you submit an application to the USPTO with information about the mark: what it is, what goods and services you sell under that mark, how long you’ve been using it, who you are, where you’re located, and lots of other stuff. You also have to submit at least one specimen, which is an image showing the mark being used in commerce. (We’ll talk about specimens in a bit.)

Then, you wait. How long do you wait, you might ask? Well, as of me writing these words (on 06 February 2024), the USPTO says that they are currently looking at applications that were filed between 14 and 28 April 2023. That’s just shy of 300 calendar days. 42 weeks. 9-1/2 months.

Trademark wait times as of February 2, 2024

It’s … yeah. It’s a while.

So at that point, many months later, an examining attorney is assigned your application. They’ll look over everything to make sure you filled it all out correctly. They’ll perform a bunch of searches to see if anyone else has already registered a similar trademark, or if anyone else is in the process of registering one. They’ll look at your specimen to make sure it’s showing the mark as it’s used in commerce. They make sure that your mark isn’t merely descriptive. (So, like, don’t try to register “wheat bread” as a trademark for your wheat bread loaves. We’ll talk more about descriptive marks later.)

If there are any problems with your application, the examiner will send you a message (usually called an “office action”), letting you know what the issues are, and often including some copied and pasted guidance on how to correct those issues.

If everything’s good to go, your mark will be “published for opposition.” This opens up a 30-day window in which others can oppose the potential registration of your mark. If someone files an opposition, you and the other party will have a case before the Trademark Trial and Appeal Board (the TTAB), who will determine who’s in the right.

If everything else is in order, and if there’s no opposition or you’ve overcome an opposition, your mark will then move on to registration. Huzzah!

 

The two trademark registers: Principal and Supplemental

The Principal Register is where the majority of trademarks live – it’s for marks that are considered by law to be “distinctive,” or to have “acquired distinctiveness.” The Supplemental Register is for marks that are not yet considered distinctive enough to be trademarks, but have the capability to eventually become distinctive.

Per the USPTO: The word “distinctive” has a particular meaning in trademark law. If a given symbol, word, or other designation is not inherently “distinctive,” it is not a “mark” and may be registered with the USPTO only upon proof that it has become distinctive. So, “acquiring distinctiveness” means acquiring trademark status.

Every TSDR page shows which register the mark is on, and you don’t even need to click anything extra. It’s right there on the first page you see when visiting.

An example of a TSDR page showing a mark on the Supplemental Register.

 

Up until 1946, there was only one register for trademarks; your mark could either be registered, or not. But in 1946 the Supplemental Register was created as part of the Lanham Act. Its main purpose was to serve as a registry for marks that didn’t meet all of the qualifications to become a full trademark, so that the owner of those not-quite-trademarks could move on to register their marks in other countries where the requirements to register weren’t as stringent. (At that time, the Paris Convention for the Protection of Intellectual Property would only allow foreign registration if a mark was already registered domestically.)

Just for giggles, a little trivia: The first trademark was registered in the USA in 1870 for paint. The oldest trademark that’s still currently active is the Samson Rope logo, originally registered in 1884.

There are a few other perks of having your not-yet-distinctive trademark placed on the Supplemental Register:

– A registrant on the Supplemental Register may use the registered trademark symbol ®;
– They are protected against registration of a confusingly similar mark by another party;
– They may use the registration as a basis to register in foreign countries, as explained above;
– And they may bring suit for infringement in federal court, but they would still have to prove in that court proceeding that the word/phrase actually functions as a mark.

But compare that to the perks of being on the Principal Register:

– Use of the registered trademark symbol ®;
– Protection against registration of a confusingly similar mark by another party;
– Use of the registration as a basis to register in foreign countries;
– A legal presumption of the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce or in connection with the goods/services listed in the registration;
– The ability to file with the US Customs and Border Protection to prevent importation of infringing foreign goods;
– The ability to bring an action regarding the mark in federal court;
– Various other legal mumbo-jumbo that equates to “gives you strong arguments in court.”

 

“Acquired distinctiveness”

So in order to get your trademark on the Principal Register, it needs to have acquired distinctiveness; it needs to be known and associated with your brand by the general public, or it needs to be unique and creative enough that it can’t be confused with other marks.

A great example of this is Nike: it’s an age-old name of the Greek goddess of victory. But these days, when most people hear it, they think of athletic gear and the simple swoosh logo. That’s acquired distinctiveness: when people hear your company’s name, they think of your company first, not of any previous usage of the word or phrase. When you say “I got this computer from Apple,” nobody is going to be puzzled, thinking you got your computer at the neighborhood fruit stand, or that you cut open an apple and a computer was inside of it. Even though “apple” is a basic word, people know what company you’re talking about if you link it to computers.

An artificially generated person confused whether their computer is an apple.Aggregate image generation by Bing Image Creator, powered by DALL-E 3.

 

What makes a strong, distinctive trademark?

Strong and distinctive trademarks are usually creative or unique, and may fall under a few types:

Fanciful trademarks: These are usually made-up words, like EXXON or VERIZON. Or portmanteaux like VELCRO (a combination of the French words for loop and hook, velour and crochet) or a word that branches off an existing word like XEROX (based on xerography). But a distinctive made-up word has its own trouble, namely that it can become so familiar in reference to a type of good, that the public refers to all other goods (including those by other makers) under the same name. That type of use of a mark runs the risk of genericide, which is a total other deep dive for the future.

Arbitrary trademarks: These are actual words, but they have no association with the underlying goods or services. Look at our Apple example above; computers don’t have anything to do with actual apples. You’ll sometimes see more than one company use this type of trademark for different goods: look at Dove chocolate vs. Dove soap. Neither one has anything to do with the actual bird, and their types of goods are so different that both can exist.

Suggestive trademarks: These are marks that suggest a quality of the goods or services. Examples are Netflix (movies [flicks] that you get on the web [the ’net]!) and Coppertone (suntan lotion that will give your skin a copper tone!) and Microsoft (software [soft] for your small [micro] home computer, as opposed to the gigantic computers in the ’70s and ’80s!).

These types of trademarks are the ones with the best chances of getting registered on the Principal Register.

 

What makes a weak trademark? AKA, why would an application change from Principal to Supplemental?

Almost all new applications that are submitted to the USPTO are automatically presumed to be for the Principal Register. Because doesn’t everyone want to win first place, and they’ll really only settle for second place if it’s the best they can get?

Once a trademark examiner looks everything over, they may send that “office action” notice to the applicant, letting them know that their mark isn’t up to snuff – it isn’t strong or distinctive. That notice will tell the applicant what the problems are, and will include some options and suggestions for how to fix those problems. The ones I see the most often are either “send us better materials,” or “change your application from the Principal to the Supplemental Register.” Here’s an example:

An image of the text of a standard non-final office action refusal.

 

In this particular application, the specimens showed the phrase printed on the front of t-shirts; thus the request from the USPTO for a different specimen. Text on the front of a shirt is just ornamental use, and the USPTO wants to see non-ornamental use. They even tell the applicant what to submit: the word/phrase on a hang tag and/or on labels used inside a garment.

Here’s an example I just made, of the difference between ornamental use and use as a brand:

An example of the same phrase, "camping is my happy place," used on the side of a mug in an ornamental fashion versus on the bottom of a mug as a brand indicator.

 

BUT, my example here on the right should not be accepted by the USPTO, because it’s a mock-up. The USPTO has been trying to crack down more recently, requiring specimens to be photographs of physical goods, and rejecting specimens that are obviously Photoshopped or otherwise made digitally. That’s why you’ll often see a specimen of a wrinkled, trashed-looking shirt covered with pet hair laying on some gross carpet. Those applicants are going overboard to show that it’s a photo of an actual physical object, not something they threw together in their design software.

Here are some actual real-world examples of marks that were amended from the Principal Register to the Supplemental Register due to the two biggest issues: descriptive/generic marks and ornamental specimens. [Note: I don’t have any specific beef against these marks! They were just some of the first ones I found that fell under these two reasons why they switched from the Principal to the Supplemental Register.]

 

Specimen examples for marks that were deemed to be merely descriptive. One is a tissue caddy, the other is a bag containing little yoga socks.

 

In both TISSUE CADDY (class 021, for “Dispensers for paper tissue”) and LITTLE YOGA SOCKS (class 025, for “Socks; Non-slip socks”), even though the specimens are showing the phrase being used as branding for the product, the phrase is just descriptive of what the object is. One is a caddy to hold a box of tissues, and the other is a pair of little socks that you’d wear while doing yoga. In both cases, the applicants amended their application so that their mark could be registered on the Supplemental Register.

The main problem with agreeing to move to the Supplemental Register in a case like this is that you’re admitting that your mark is just descriptive. You weaken your legal position; if you try to take someone to court for using the same descriptive terms for a similar product, the registration shows that you’ve already claimed legally that your use, as of the registration date, is purely descriptive and not distinctive.

Now, how about ornamental specimens?

Two specimens of Supplemental trademarks deemed to be ornamental: text on a t-shirt and text on a duffel bag.

 

Here in both TODAY I GET TO… and YOU DID NOT WAKE UP TODAY TO BE A WEAK ASS BITCH, you can see that the specimens show the goods with the phrase printed on the front. (And you can tell that they’re actual physical objects, because they’re tossed on the floor.) These are both the classic type of ornamental specimen; a common or common-ish phrase on the front of the goods, which  doesn’t show it being used as an indicator of the source of goods; it shows it as an informational slogan.

(In the case of the WEAK ASS BITCH specimen, the bag above is actually the replacement; in their first duffel bag specimen, the phrase had a lot of the hallmarks of looking Photoshopped, in a very different font and style.) (I also take grammatical umbrage with this one, because in my mind, WEAK-ASS should be hyphenated so that you can’t accidentally read it as WEAK ASS-BITCH.)

The original duffel bag specimen for one of the marks shown above, which appears to possibly be Photoshopped.

 

The best specimens show the mark on a genuine label, tag, packaging, or as a maker’s mark on the goods.

Just so you have some numbers here: at the time of writing this paragraph, there are 185,930 live and active trademarks on the Principal Register in class 025, which covers clothing. There are 4,823 live and active marks in that same class on the Supplemental Register. That means about 2.5% of registered trademarks for clothing are Supplemental. But oh my, are they becoming troublemakers…

Search results for all of the currently live and active trademarks on the Principal Register, in international class 025.

Search results for all of the currently live and active trademarks on the Supplemental Register, in international class 025.

 

Why is the Supplemental Register a problem these days?

Mainly because a lot of marketplaces out there are now accepting trademark infringement notices for both Principal and Supplemental marks, with no differentiation between the two.

As far as some marketplaces are concerned, both types of trademarks are the same thing. They both have registration numbers, and they’re both listed in the USPTO’s database as “issued and active.” So when the owner of a trademark on the Supplemental Register submits a trademark infringement notice, the marketplace accepts it and takes down the reported infringing material.

This is despite the facts that:
– Usually the supposedly infringing material is using a common word or phrase ornamentally, and as such are not making any reference to the “brand” of the trademark;
– The Supplemental Register offers no legal presumption of the registrant’s ownership of the word/phrase, nor does it presume exclusive rights to use that word/phrase in commerce;
– The USPTO is very clear that “a designation on the Supplemental Register is not a ‘trademark’ yet.”

I understand why these marketplaces just go ahead and take stuff down, even if the trademark is on the Supplemental Register; they want to keep their safe harbor status, and as such, when they’re notified of any intellectual property violation of any kind, they’ll take it down without much analysis. It isn’t worth their time to research every trademark infringement notice that comes across their desks.

But there are rascals out there who are counting on exactly that! They know that the marketplaces are as hands-off as they can be, and they know that small businesses don’t want to spend the time or money to take them to court.

So some devious scamp can spend $250 to submit an application for a common phrase (or, often, a phrase in its pop culture heyday era). They don’t even have to really try to make it look like a brand; they can just submit a specimen showing that common phrase on a t-shirt or mug or whatever. Then when the USPTO says, “Hey, your specimen is totes ornamental,” the applicant can just be all, “Oops, I’ll move it to the Supplemental Register,” and then the mark gets registered there.

And then that someone can go on a raging takedown spree across the internet, throwing dings and strikes and penalty points at dozens (Hundreds? Thousands?) of creators and makers who are using that common phrase ornamentally on their own goods. And many of the marketplaces accepts those notices, because it’s a “registered trademark”!

Thus, these scoundrels corner the market on a common phrase or something having a pop culture moment. In a lot of marketplaces, they’re the only one who can sell shirts or mugs or whatevs with that phrase, and they’ll attack anyone else who tries to also capitalize on that phrase or moment.

An artificially generated image of a man and woman both wearing a t-shirt which reads OK BOOMER. One has a red X over the top, indicating that it is not allowed.Aggregate image generation by Bing Image Creator, powered by DALL-E 3.

 

So what can we do about these cruddy Supplemental marks?

Submit Letters of Protest: If you spot the application before the trademark is registered (and even better, if you spot it before it’s even been assigned to an examiner), you can send the USPTO a Letter of Protest showing that the word or phrase is commonplace and doesn’t act as an indicator of the source of goods, or that the mark is merely descriptive or ornamental. It does currently cost $50 USD to submit an LoP, but for some bestselling designs, it’s worth the cost. (And you may be able to split that cost among several parties that would all be affected, if you’re in a helpful community.)

Contact the marketplaces: Make sure that the marketplaces are aware of the difference between the Principal and Supplemental Registers. Some places, like Etsy, say that they’ll reject a notice of infringement if the mark is on the Supplemental Register.

A screencap from Etsy's website, showing that they should be refusing any trademark infringement notices where the trademark is on the Supplemental Register.

Etsy: Why Was My Notice of Infringement Rejected?

 

So if you receive an infringement notice through Etsy for a mark on the Supplemental Register, you can write back to remind them that their own policies show that those types of claims should be rejected.

Amazon Brand Services, likewise, will only allow trademarks on the USPTO Principal Register into their brand registry.

A screencap from Amazon's Brand Registry website, showing that they should only be allowing brands on the Principal Register.

Amazon Brand Services: Review eligibility requirements

 

Unfortunately, Amazon also allows live applications on the Principal Register. Which, as we’ve discussed previously, almost all applications start out on the Principal, and only move to Supplemental when they absolutely have to. But if you get dinged by something that was once a Principal application, and eventually became a Supplemental registration, you should be able to contact Amazon to let them know. I would presume that Amazon would remove that brand from their registry, but I’m not certain.

Other marketplaces may be more or less open to being informed. Hell, I just had to inform a font marketplace that they wanted me to fill out the wrong tax form, so don’t assume that the staff at any particular marketplace is in the know when it comes to trademark rules and regulations. 🙄

Band together with other designers: If someone is out there on a takedown spree with their Supplemental mark, you may be able to find other folks who have been similarly affected. It isn’t usually worth the time or money for one small business owner to go after the Supplemental mark owner, but the cost may be more reasonable split between several. You may be able to hire a lawyer to send a cease-and-desist, or even pursue cancellation of the registration. (Reminder. I myself am not a lawyer, nor is any of this legal advice.)

Spread the word: There are a whole bunch of communities for designers, makers, crafters, and sellers. Even just talking among your people about a takedown can be helpful! You may discover that other people have been hit with the same takedown, or you may find out about a legal action already in process that you may be able to join. And maybe, just maybe, you’ll find me in there too!

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