On My Mind Blog

In recent years, many brand owners have adopted marks that immediately describe aspects of their goods or services (imagine CREAMY for yogurt).  This is a way of letting consumers know something about the goods or services, without having to spend money to educate them through advertising or publicity.  The flip side to this choice: it is harder to stop competitors from using descriptive terms that are the same or similar.

If you have selected a descriptive mark, a U.S. application seeking registration on the Principal Register is likely to be refused, unless you can demonstrate that consumers have come to recognize that term as a source designation for your goods or services (referred to as acquiring secondary meaning).

However, you can apply to register your mark on the Supplemental Register if your mark is a merely descriptive term or a geographically descriptive term or a surname, and the mark (1) actually is being used in U.S. commerce, and (2) is capable of indicating source.  A registration granted on the Supplemental Register essentially acts as a placeholder while you are developing secondary meaning.

It is possible to apply directly for registration on the Supplemental Register.  Alternatively, if you applied for registration on the Principal Register, but were refused because of the mark’s descriptiveness and lack of secondary meaning, it is possible to amend your application to the Supplemental Register.  In either case, your mark must still meet the requirements mentioned in the preceding paragraph.

The principal disadvantage of a registration on the Supplemental Register (as distinguished from a registration on the Principal Register), is that it is not evidence of exclusive rights in the mark.  However, a Supplemental Register registration does have advantages.

Advantages

• A Supplemental Register application is not published for opposition.
• You can use the ® registration symbol with a mark that has become registered.
• The registration will prevent anyone else from registering a confusingly similar mark, on the Principal or Supplemental Register.
• The registration can serve as a basis for federal jurisdiction in an infringement action (although you would have the burden of proving the mark’s ownership, validity, and distinctiveness in addition to a likelihood of confusion).
• The U.S. registration can be a basis for an application to register the mark in certain other countries.
• The mark will be listed in availability search reports obtained by others.
• You can later file a new application to register your mark on the Principal Register, after the mark has acquired distinctiveness through use and advertising (which sometimes may be inferred if you have made substantially exclusive use of your mark in U.S. commerce for five (5) consecutive years).

Disadvantages

• An intent-to-use application, and an application seeking to extend rights to the U.S. under the Madrid international treaty, are not eligible for the Supplemental Register (but an issued national registration in another country may be the basis of a U.S. application for the Principal or Supplemental Register).
• An application for the Supplemental Register is an admission that the mark is neither inherently distinctive nor has it acquired secondary meaning at the time of application.
• The registration does not carry a nationwide presumption of validity, ownership, or exclusive rights, so these must be proved in any litigation involving the mark.
• Subsequent users are not deemed to have constructive notice of the registration.
• The registration may be challenged at any time.
• The registration can neither be recorded with U.S. Customs and Border Protection to prevent unauthorized imports, nor with the Trademark Clearinghouse to assist with domain name protection.

Blocking Registration on the Principal Register

Almost 50 years ago, the U.S. Court of Customs and Patent Appeals (CCPA), the predecessor to the U.S. Court of Appeals for the Federal Circuit (CAFC), decided for the first time that a mark registered on the Supplemental Register could block an application to register a confusingly similar mark on the Principal Register.  Application of the Clorox Company, 578 F.2d 305 (C.C.P.A. 1978) (STAIN ERASER on the Supplemental Register held to prevent an application to register ERASE for the identical goods on the Principal Register).

In 2025, this principle was reaffirmed by In re: Matthew Amoss, Application No. 2024-1617 (Fed. Cir. December 15, 2025) (GREAT BASIN COFFEE COMPANY on the Supplemental Register held to bar BASIN BEVERAGE CO., both for coffee- and tea-based beverages, on the Principal Register on likelihood of confusion grounds).  In reaching this decision, the CAFC pointed out that “placement on the Supplemental Register reflects only a lack of inherent distinctiveness,” but does not necessarily “equate to generic or common descriptive wording.”  Thus, what the Court called “non-generic descriptiveness” does not reflect an inability to identify source, and it may serve as a basis for a likelihood of confusion refusal.

Author’s Note:

Even though your Supplemental Register registration may block someone else’s registration of an identical or similar mark, this does not mean that you have the right to stop a competitor from using that mark.  After all, your mark is a descriptive word that anyone may use in a descriptive sense and may even use as a mark unless your mark has acquired secondary meaning as a source indicator for your goods or services.  This secondary meaning may be impossible to achieve if your competitor is also using the same mark.

For this reason, trademark lawyers urge clients to select marks that are fanciful (such as EXXON for gasoline), arbitrary (such as APPLE for computers), or even suggestive (such as COPPERTONE for suntan lotion) rather than marks that are merely descriptive.  For a discussion of the difference, see our article “Differentiating Merely Descriptive Marks from Suggestive and Unitary Marks.”  Of course, the generic name of a product or service (such as BICYCLE for bicycles) can never be protected as a mark.

If you nevertheless adopt a descriptive word as your mark, it probably is worthwhile applying to register that mark on the Supplemental Register and using a ™ and (after registration) an ® symbol, in conjunction with your mark.  Others may decide to adopt a different mark to avoid a dispute with you.

For further information, please contact William M. Borchard or your CLL attorney.