​​As we have explored in a prior article, ​Office Actions are a frequent occurrence in trademark applications submitted to the United States Patent and Trademark Office (USPTO). One of the grounds cited in an Office Action might be a “Supplemental Register Advisory” that not-so-gently suggests that the Applicant should amend its application to seek registration of the mark on the Supplemental Register instead of the Principal Register.  

What is Supplemental Registration of Trademarks? 

While Supplemental Registration does come with legal protections for the mark, these protections are not as stringent as those that come with registration on the USPTO’s Principal Register, as discussed here.​     ​ 

Let’s continue our discussion with the example mark of SOFT for a brand of pillows as used in this previous post. In this example, the Owner of the SOFT mark and brand of pillows has applied to register the mark of SOFT to the Principal Register. In this example, this application was submitted as a 1B Intent-to-Use application, meaning the Owner is not yet using the mark in commerce to sell pillows.  

During the examination of the application, the Examiner of the SOFT application has deemed the mark to be merely descriptive of the Owner’s stated goods, there being a fair presumption that “pillows” are indeed “soft.” A “Supplemental Register Advisory” was placed into the Office Action, advising that the mark may be eligible for registration on the Supplemental Register if – and here is the big catch – the mark is being used in commerce at the time the conversion to the Supplemental Register is made by the Owner.  

That is, in order to complete the conversion of the pending trademark application to an application to the Supplemental Register for the SOFT pillows mark, the Owner of the brand and the mark must be actively using the mark in commerce, as demonstrated by the submission of a specimen, as previously discussed. 

A Critical Difference Between Principal and Supplemental Registers 

This situation illustrates a critical difference between the Principal and the Supplemental Registers: Intent-to-Use applications for marks on the Supplemental Register are not allowed. An application for a mark directly to the Supplemental Register must be submitted with a valid specimen that shows the mark being used in commerce at the time the application is submitted. Only applications for marks to the Principal Register may be submitted as “1(b)” or “Intent-to-Use” applications, thereby gaining a “priority date” that predates the mark Owner’s actual use of the mark in commerce.  

In the SOFT mark application example, if the Owner of the brand is now using the mark of SOFT to sell pillows, great! The Owner (or the Owner’s attorney) may simply submit the specimen and an Allegation of Use to the USPTO to convert the original Intent-to-Use application to an In-Use application for the mark to the Supplemental Register. Easy fix! It must be noted, however, that the SOFT application’s priority date will now be the date on which the Owner submitted the Allegation of Use to the USPTO, and not the date on which the original application was submitted as an Intent-to-Use application to the Principal Register. 

What if the SOFT brand Owner is not yet using the mark to sell its pillows? This is where the Owner has some decisions to make about the future of its brand and mark.  The Owner may only convert the pending Intent-to-Use application to the Supplemental Register if the mark is in use in commerce. There are no exceptions to this rule. If the Owner will not be using the mark in commerce by the deadline for a response to the pending Office Action, then the Owner’s best course of action could be to let the original Intent-to-Use application abandon at the USPTO, unless the Owner is willing to argue that the Examiner’s determination that the mark is merely descriptive is incorrect.  

As you can see, these complex legal issues are best discussed with an experienced IP attorney. Each case is different, and the facts of each may very well mean that two seemingly similar cases may have very different outcomes. It is best to follow the advice of an experienced counsel as you set out to build your brand. 

Need an IP Attorney? 

Sand, Sebolt & Wernow is an intellectual property law firm. We specialize in patents, trademarks, copyrights, IP (Intellectual Property) litigation licensing, foreign filings, and trade secrets.  

Our team of professionals are innovators, just like you, and passionate about protecting your intellectual property. We represent individuals and businesses of all sizes, from Fortune 500 corporations to sole proprietors. It’s our mission to guide you through the process of protecting your assets with the appropriate mix of patents, trademarks, copyrights and trade secrets.  

If you’re looking for an experienced IP attorney, contact us.