The Value of a Supplemental Registration on the Supplemental Register

A supplemental registration often times gets a bad wrap primarily for the fact that it is not a principal trademark registration. The United States Patent and Trademark Office maintains to trademark registers, the Principal Register and the Supplemental Register. The Supplemental Register is reserved for trademarks that are descriptive and need time to acquire trademark rights instead of being immediately protectable.

As you can imagine, trademarks on the Supplemental Register do not enjoy the same benefits as those on the Principal Register. However, a trademark owner with a trademark on the Supplemental Register is allowed to use the circle “R” trademark designation, which is often an overlooked benefit of the Supplemental Register. But probably a more important overlooked and often overlooked benefit is the ability to prevent a subsequent trademark owner from registering a confusingly similar mark. This potential was on display in the recent Trademark Trial and Appeal Board case In re Productos Verdes Valle, S.A. de C.V.

Productos Verdes Valle filed a trademark application to register the mark TAMAL TAMAYO & Design for “tamales.” The design consisted of a chef standing behind a stock pot holding the lid in his right hand. The Trademark Office refused registration of Productos Verdes Valle’s mark in the ground that it was likely to cause confusion with a prior supplemental registration for the mark TAMAYO in connection with restaurants.

The Board held that there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of substantially identical marks for substantially similar goods or services, or that a different test for confusion applies to supplemental registrations.

When it came to assessing the strength the TAMAYO mark, the Board found there was no evidence of commercial strength. Therefore, there was nothing to counterbalance the conceptual weakness in the TAMAYO supplemental registration.

With respect to the similarity of the marks, the Board found that TAMAYO was the dominant feature of both marks. The word TAMAL would either be understood as the foreign word for tamales or a given name. Because more weight is given to words instead of designs, the Board held that the marks were confusingly similar.

Finally, the Board found that tamales and restaurants are unrelated. In a familiar story before the Trademark Office, something more needs to be shown to support the finding that restaurants and a food items are related. In this case, the only evidence the Trademark Office offered was that some restaurants also sell branded tamales. This evidence alone was insufficient to satisfy the “something more” requirement for finding tamales related to restaurants. Therefore, the Board reversed the likelihood of confusion finding by the Trademark Office.

What this case demonstrates is the potential for preventing the registration of a subsequent mark with a supplemental registration.

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