The Supplemental Register – The Consolation Prize of the Trademark World

The “participation trophy” is supposedly a hallmark of youth sports these days. It’s often cited as a reason for our young people getting “soft” in a world where only winning and losing matters. My kids are 12 and 9 and play many sports (sometimes it feels like all of them). I’ve yet to see a single participation trophy in the real world. Maybe the trophy is just a myth, a useful wedge issue for culture warriors.

Anyways, the U.S. Patent and Trademark Office has its own version of a participation trophy. It’s called the “Supplemental Register”. It’s a consolation prize for trademark applications that don’t conflict with other marks but suffer from other defects. Most commonly, these are descriptive trademarks (i.e., marks that have a descriptive relationship with the applied-for goods/services).

As far as consolation prizes go, the Supplemental Register is a good one. You still get a federal registration certificate. You can still use the ® symbol. Registration on the Supplemental Register will block later-filed applications for confusingly similar marks. Also, registration on the Supplemental Register is a placeholder for a later-filed application to register the mark on the Principal Register after five years of substantially exclusive use.

Traditionally, the biggest downside to the Supplemental Register is that there is no nationwide priority, which makes these marks hard to enforce. In recent years, another downside has emerged for Amazon sellers: marks on the Supplemental Register are not eligible for the Amazon Brand Registry. Without the Brand Registry, Amazon sellers miss out on powerful tools, including proprietary text and image search, and increased authority over product listings with their brand name.

This can be a pitfall for sellers who enroll their marks on the Brand Registry with pending applications only to discover later their marks getting kicked off the registry after amending to the Supplemental Register. If you find yourself in this situation (or you’re concerned about it), one workaround is to file an application for a word/design combination. The additional design element will allow the application to stay on the Principal Register. As long as the literal text of the mark matches the brand name on Amazon, it will be eligible for the Brand Registry.

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