Amazon Users: Beware the Supplemental Register for Trademarks!

By: Nick Gingo

If you or your clients do business via Amazon, then you should know that registering a trademark on the Supplemental Register may not be the best idea.

Typically, when seeking to register an arguably descriptive trademark at the U.S. Patent and Trademark Office, applicants are presented with the option to either: (1) persuade the Examining Attorney that the mark is not descriptive and should be registered on the Principal Register; (2) attempt to present sufficient evidence of acquired distinctiveness to allow the mark to be registered on the Principal Register; or (3) simply amend the pending application to seek registration on the Supplemental Register.

Given the additional time and money necessary for pursuing options 1 or 2, many applicants choose option 3. After all, registration on the Supplemental Register still garners many benefits, including the ability for the mark owner to use the R symbol and the fact that the registration acts as a block to later-filed applications to confusingly similar marks. And the mark owner can always reapply for registration on the Principal Register in the future when the mark has been in use for a longer period of time. But mark owners and their attorneys should consider the effect of such a decision in the wider world.

These days, many brand owners are heavily dependent on Amazon as a distribution channel. And the Amazon Brand Registry can be a valuable tool for brand owners looking to defend their IP in that marketplace - it allows a brand owner to search for potentially infringing content and have it removed from the site. But a key consideration here is that the Amazon Brand Registry does not accept registrations on the Supplemental Register. In that case, the mark owner's ability to protect its mark on a potentially massive distribution channel could be greatly limited.

Of course, in situations where a mark is blatantly descriptive and has only recently been put to use, there may be no other option. But in cases where descriptiveness is a closer question and/or where there is at least a reasonable amount of evidence of acquired distinctiveness, mark owners should very much consider pushing the issue with the Examining Attorney. The ability to potentially police a mark through the Amazon Brand Registry may be enough to justify the additional expense.

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