FORUM Claim Number: FA2004001891242
May 19, 2020
The Supplemental Register of the United States Patent and Trademark Office is a curious thing. It is a registrar of trademarks but unlike the Principal Register, it does not confer on a registrant the usual rights associated with a trademark. Instead it is a placeholder registration for marks which have not acquired distinctiveness.
Domestic registration is required before marks can be registered in foreign jurisdiction. The purpose of the Supplemental Register then is to allow the holder of the registration to apply for registration in other countries where the requirements for distinctiveness are often less stringent than they are in the US.
The holder of a trademark registered only on the USPTO Supplemental Register will not satisfy the UDRP standing requirement established by paragraph 4(a) of the Policy. The recent case of Nicolas Karl Reep v. Ali Bazzi[1] demonstrates that having to rely on a registration on the Supplemental Register will be fatal to a complaint.
If the Complainant in that case had used its registration to acquire rights in another jurisdiction, the standing requirement would have been no issue for it.
To add to the peculiarity, the Complainant acquired the registration through an assignment of rights. That may seem unusual because even though there are indeed legal rights in a mark on the Supplemental Register that can be assigned (eg to have the mark assessed for registration on the Principal Register), the rights are still not evidence of a registered trademark.
As the USPTO says: “the only requirement for registration on the Supplemental Register is that a mark be capable of distinguishing goods or services, not that it actually serve such a function.”
Complainants without a registered mark have one other option for meeting the standing requirement… common law rights. Unfortunately, proving that you have common law trademark rights requires real evidence and usually a lot of it. For insights into the evidence that should be adduced to show a common law trademark, see our note at https://www.domaintimes.info/post/proof-of-common-law-trademarks-evidence-is-vital.
A question for readers: does your trademark registration authority have a Supplemental Register like the USPTO or any sort of equivalent? Please let us know.
[1] The Hon Neil Brown QC was the panelist in this case.
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