Some Office Actions specify an Advisory for the Supplemental Register.  

Now, there are two different Advisories for the Supplemental Register.

If you are ALREADY selling your goods or services, your Advisory to the Supplemental Register will specify that your application has been refused on the Principal Register, but that you can amend your application to the Supplemental Register. 

If you are NOT yet selling your goods or services, the Advisory will explain that you are not yet eligible for the Supplemental Register.  That’s because you first need to be selling goods and services in commerce to be eligible for the Supplemental Register.  For instance, this Office Action has the following language:

“Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.”   

We’ll first begin with a discussion for those that received an Advisory for a Supplemental Register who are already selling their goods or services.  Since you applied as a 1(a) application, which means you are already selling your goods or services, you are immediately already eligible for the Supplemental Register!

As background, the Supplemental Register is available for trademarks that are not eligible for the Principal Register.  

This might occur when you receive a Refusal in your Office Action that states that your Trademark is Merely Descriptive, Merely Geographically Descriptive, or Primarily Functions as a Surname. 

In other words, the USPTO determined that your trademark is not sufficiently distinctive for the Principal Register.  

Let’s start with how generic trademarks are treated at the USPTO. 

• Let’s say I’m selling t-shirts, and my trademark is T-SHIRTS.  This trademark would not even be eligible for the Supplemental Register because it is a generic trademark.  In other words, it is literally the name of the goods that I’m selling, so no protection can be provided, even on the Supplemental Register.

Now, let’s see how descriptive trademarks are treated at the USPTO. 

• Let’s say I’m selling bananas, and my trademark is YELLOW.  This trademark is descriptive of my goods, because yellow is the color of bananas.  It’s describing a feature of my goods, but it’s not simply the name of the product itself, which in this case, is bananas. 
• This mark would be refused under a Section 2(e)(1) Refusal.  Unlike a generic mark, however, it could be eligible for the Supplemental Register.

So, what are the perks of Supplemental Registration? 

First, just like the Principal Register, you can use the registered trademark symbol. 

Second, you can sue for trademark infringement in Federal Court. 

Third, it will prevent other trademarks from being registered that are confusingly similar to your trademark. 

However, the trademark protection afforded by the Supplemental Register is not as strong as the trademark protection afforded by the Principal Register. 

For instance, unlike the Principal Register, there is no determination that your trademark is distinctive.  Also, unlike the Principal Register, trademarks on the Supplemental Register are not presumed to be valid and enforceable.

So, you have to make a decision.

• First, you could decide that you want to challenge the Refusal specified on your Office Action.  For instance, let’s say my trademark was rejected because it is merely descriptive.  I would have to come up with reasons and arguments why I do not believe the trademark is descriptive.
• Second, you could decide to register on the Supplemental Register.  For many people, this is a preferable option because they will still receive the benefits and protections of the Supplemental Register.  And their application might otherwise be rejected completely, in which case they wouldn’t receive ANY type of protection.  

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If you are already selling your goods and services, you can immediately amend your Application to the Supplemental Register in your Response because you are already eligible. 

But, if you’re not yet selling your goods or services, you are not yet eligible for the Supplemental Register.  

The Supplemental Register requires that you are already selling goods and services

So, in this case, you’d have to file what is called an Allegation of Use.  

What does that mean?  

It means you have to submit a specimen -- or proof -- that you are selling your goods and services with your trademark prior to the application being published by the USPTO.  

This also changes your filing basis!  

This changes your application from a 1(b) intent to use application, which means you have a genuine intent to use your trademark with your goods and services, to a 1(a) application, which means you are using your trademark with your goods and services in business.  This makes sense because you are now showing proof to the USPTO that you are selling your goods and services with your trademark!

For more information on acceptable proof in filing the Allegation of Use, look at the “SPECIMENS” video in the Trademarks Classroom.  

Then, when you file the Allegation of Use, you would also then specify that you would like to amend to the Supplemental Register.  

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