15 U.S.C. § 1091

Supplemental register

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(a) Marks registerable

In addition to the principal register, the Director shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled “An Act to give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes”, to be called the supplemental register. All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register provided in this chapter, except those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are applicable. Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.

(b) Application and proceedings for registration

Upon the filing of an application for registration on the supplemental register and payment of the prescribed fee the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this title shall apply.

For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, device, any matter that as a whole is not functional, or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant’s goods or services.

(July 5, 1946, ch. 540, title II, § 23, 60 Stat. 435; Pub. L. 87–772, § 13, Oct. 9, 1962, 76 Stat. 773; Pub. L. 100–667, title I, § 121, Nov. 16, 1988, 102 Stat. 3942; Pub. L. 103–182, title III, § 333(b), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 105–330, title II, § 201(a)(5), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106–43, § 6(b), Aug. 5, 1999, 113 Stat. 220; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(6), Nov. 2, 2002, 116 Stat. 1908.)Editorial NotesReferences in Text

Paragraph (b) of section 1 of the Act of March 19, 1920, referred to in subsec. (a), is paragraph (b) of section 1 of act Mar. 19, 1920, ch. 104, 41 Stat. 533, which was classified to section 121(b) of this title, and repealed by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444, insofar as inconsistent.

Prior Provisions

Acts Mar. 19, 1920, ch. 104, § 1, 41 Stat. 533; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 2, 52 Stat. 638.

Amendments

2002—Subsec. (c). Pub. L. 107–273 struck out second comma after “numeral”.

1999—Subsec. (a). Pub. L. 106–113 substituted “Director” for “Commissioner”.

Pub. L. 106–43 substituted “trademarks” for “trade-marks”.

Subsec. (b). Pub. L. 106–113 substituted “Director” for “Commissioner”.

1998—Subsec. (c). Pub. L. 105–330 substituted “, device, any matter that as a whole is not functional,” for “or device”.

1993—Subsec. (a). Pub. L. 103–182 substituted “(d), and (e)(3)” for “and (d)” and inserted at end “Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.”

1988—Pub. L. 100–667, § 121(6), struck out undesignated concluding par. which read as follows: “Upon a proper showing by the applicant that he requires domestic registration as a basis for foreign protection of his mark, the Commissioner may waive the requirement of a full year’s use and may grant registration forthwith.”

Subsec. (a). Pub. L. 100–667, § 121(1), (4), designated first par. as subsec. (a), made technical amendment to reference in the original act to subsections (a), (b), (c), and (d) of section 1052 of this title resulting in no change in text, substituted “are in lawful use in commerce by the owner thereof, on” for “have been in lawful use in commerce by the proprietor thereof, upon”, struck out “for the year preceding the filing of the application” after “any goods and services”, and inserted “subsections (a) and (e) of” before “section 1051”.

Subsec. (b). Pub. L. 100–667, § 121(2), (5), designated second par. as subsec. (b) and substituted “prescribed fee” for “fee herein provided”.

Subsec. (c). Pub. L. 100–667, § 121(3), designated third par. as subsec. (c).

1962—Pub. L. 87–772 struck out “has begun the lawful use of his mark in foreign commerce and that he” before “requires domestic registration” in last par.

Statutory Notes and Related SubsidiariesEffective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents.

Effective Date of 1998 Amendment

Amendment by Pub. L. 105–330 effective Oct. 30, 1998, and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub. L. 105–330, set out as a note under section 1051 of this title.

Effective Date of 1993 Amendment

Amendment by Pub. L. 103–182 applicable only to trademark applications filed on or after Dec. 8, 1993, see section 335(c) of Pub. L. 103–182, formerly set out in a note under section 1052 of this title.

Effective Date of 1988 Amendment

Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title.

Repeal and Effect on Existing Rights

Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under section 1051 of this title.

Executive DocumentsTransfer of Functions

For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.

Notes of Decisions

Cited in 57 cases (4 in the last 5 years), 1951–2026 · leading case: Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965 (Fed. Cir. 2018).

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Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965 (Fed. Cir. 2018). · cites it 2× “See 15 U.S.C. §§ 1091 -1096 ; see also In re Bush Bros.”

Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F. Supp. 2d 340 (E.D.N.Y 2007). · cites it 2× “15 U.S.C. § 1091 . While registration on the Supplemental Register is not evidence of ownership, validity, or the exclusive right to use, such registration enables the registrant, inter alia, to sue for infringement in federal court.”

Eldon Indus., Inc. v. Rubbermaid, Inc., 735 F. Supp. 786 (N.D. Ill. 1990). · cites it 4× “Specifically, Rubbermaid argued that Eldon had not satisfied the requirement of § 23 of the Lanham Act, 15 U.S.C. § 1091 , that registration on the Supplemental Register is appropriate only if the mark was “in lawful use in commerce by the proprietor thereof, upon or in…”

In Re Bush Bros. & Co., 884 F.2d 569 (Fed. Cir. 1989). · cites it 4× “The Board held that DELUXE was neither distinctive nor capable of becoming distinctive of the source of appellant’s goods, and thus was incapable of serving as a trademark. A mark that does not meet all the requirements for registration on the Principal Register, but that is…”

Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d 524 (6th Cir. 2014). “"Designations that have not yet acquired a trademark significance but are capable of doing so may be registered on the Supplemental Register,” which was created by 15 U.S.C. § 1091 . 3 McCarthy on Trademarks and Unfair Competition § 19:32 (4th ed.”

Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distributors Pty. Ltd., 647 F.2d 200 (D.C. Cir. 1981). “Count II alleged that defendant Kaiser had wrongfully obtained registration of the Kaiser-Stuhl mark on the United States Supplemental Register, see 15 U.S.C. § 1091 (1976), by representing that the name Kaiser-Stuhl distinguished its wine from other wines.”

Clairol Inc. v. The Gillette Co., 389 F.2d 264 (2d Cir. 1968). · cites it 2× “Registration of a mark on the Supplemental Register does nothing to enlarge the substantive rights of the registrant.”

California Cooler, Inc. v. Loretto Winery, Ltd. & Apam, Inc., 774 F.2d 1451 (9th Cir. 1985). “” 15 U.S.C. § 1091 (1982). See also Application of Simmons Company, 278 F.”

Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023 (Fed. Cir. 2017). “In March 2006, Lyons therefore amended the application to seek registration on the Supplemental Register, based on actual use under 15 U.S.C. § 1091 (a), alleging first use anywhere as of December 20, 1995 and first use in commerce at least as early as June 18,1996.”

In Re Compagnie Generale Mar., 993 F.2d 841 (Fed. Cir. 1993). · cites it 2× “By a simple amendment to the Supplemental Register, the rejection for descriptiveness or misdes-criptiveness is avoided (see 15 U.S.C. § 1091 (a)) and the registrations will issue.”

Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877 (8th Cir. 2014). “1989) (internal citation omitted) (quoting 15 U.S.C. § 1091 ). Therefore, “a mark that is ineligible for registration on the Principal Register because it is- 'merely descriptive’ of the goods or services may be registered on the Supplemental Register.”

In re Clorox Co., 578 F.2d 305 (C.C.P.A. 1978). · cites it 3× “§ 1127 ] Section 23 of the Act indicates that the Supplemental Register is “a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920 * * * 15 U.S.C. § 1091 . Section 26, 15 U.S.C. § 1094 , provides: The provisions of this chapter shall…”

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