Supplemental vs Principal Register: Trademark Basics

Trademarks play a crucial role in establishing a business identity and helping consumers recognize and connect with your brand. If you have a physical brand in the US or operate virtually within the US, it is advisable to file a trademark with the United States Patent and Trademark Office (USPTO)

Before filing a trademark, it is important to know that there are two registers upon which your trademark can appear as per the Lanham Act. After a successful registration, your trademark will either appear on the principal or the supplemental register.

In this blog, learn the distinction between principal and supplemental registers, what it means for your trademark registration, and its advantages and disadvantages.

What is a Principal Register?

The principal register, also known as the primary register, is where trademarks are registered when they are unique in nature. Registering your trademark grants you the exclusive rights of ownership in all 50 states and you can challenge trademark infringements. The other party must prove otherwise if there’s a legal dispute about ownership. In short, the principal register provides the strongest trademark protection.

Moreover, a trademark registered on the principal register can achieve incontestable status five years after filing a Section 15 declaration, which increases the trademark owner’s credibility in legal disputes over ownership. In these situations, the mark is typically seen as valid unless it’s generic, abandoned, misleading about the source, or obtained through fraud.

Generally, a trademark should

• Fulfill all Trademark registration requirements.
• It needs to be distinctive or has acquired distinctiveness (secondary meaning).
• It faces no opposition during the 30-day period before publication.

Most often, your trademark will be registered in a Principal Register if it is one of these three.

1. Suggestive Trademarks

Suggestive marks don’t directly describe specific goods or services but instead require consumers to use their imagination. Examples include Netflix (hinting at internet streaming) and Amazon (suggesting a vast marketplace).

2. Fanciful Trademarks

Fanciful marks are completely unique and original, providing the highest level of protection. Examples include Kodak, Verizon, and Häagen-Dazs.

3. Arbitrary Trademarks

Arbitrary marks use ordinary terms unrelated to the goods or services they represent. Examples include Shell for petroleum, Apple for computers, and Dove for soap.

What is a Supplemental Register?

If your trademark is descriptive or lacks distinctiveness, it cannot be registered on the Principal Register. Descriptive marks use words that directly describe a product or service. When consumers encounter a descriptive mark, they usually interpret it as a product feature description rather than a unique business identifier.

For instance, a mark like ‘FRESH FRUIT MARKET’ is descriptive when used for grocery store services because it directly communicates the nature of the business. There’s nothing inherently unique about the mark that would help consumers differentiate this grocery store from others. Those trademarks that are primarily surnames or geographically descriptive are also listed on the Supplemental Register since they are not unique.

Although the Principal register grants you more concrete protection since it grants the right of automatic presumption which is not available on the Supplemental Register, you still are permitted to use the ‘R’ symbol to showcase that the mark is already registered and in use. It’s worth noting that the USPTO will reject any applications for identical or similar marks.

Advantages of the Principal Register

The Principal Register offers trademark owners a comprehensive set of legal protections due to its higher threshold of distinctiveness compared to the Supplemental Register.

Here is a list of a few benefits you can expect as a trademark owner who has a registration in a Principal Register, as per Trademark Manual of Examining Procedure (TMEP) 801.02(a).

Intent-to-Use Applications:

Trademark applications can be initially filed on an intent-to-use basis, streamlining the registration process.

Constructive Notice:

Registration on the Principal Register serves as constructive notice of ownership, alerting potential infringers to the trademark owner’s rights.

Presumption of Validity:

The trademark’s validity is presumed, which helps reinforce the owner’s exclusive rights.

International Expansion:

The Principal Register facilitates international trademark protection, allowing Madrid Protocol applications based on the registered trademark.

Disadvantages of the Supplemental Register

On the Supplemental Register, registered trademarks have no automatic presumption of validity and ownership. This means that in the event of a trademark dispute or lawsuit, your client would need to provide substantial evidence to establish the exclusive ownership of the mark. This includes proving in front of a court how the other party infringed on your registered mark within your geographical location and how it could create consumer confusion among your customers.

The courts also consider brand presence, sales volume, business activities related to the mark, advertising investments, and the defendant’s intentions in the dispute. This process can become both time-consuming and financially burdensome due to the need for comprehensive evidence-gathering and potential legal battles.

Moreover, a Madrid Protocol application cannot be initiated upon a trademark listed on the supplemental register.

Similarities Between Principal and Supplemental Register

As we discussed the differences between the two registers above, it is important to now to highlight a few similarities.

1. Permission to use the federal trademark symbol (®).
2. The USPTO rejects new application that is similar and might cause confusion
3. Eligibility for international trademarks based on registration.
4. Capability to initiate legal action against infringing parties in federal court.
5. Functioning as deterrents against potential infringement.
6. Establishing a foundation for issuing trademark cease and desist notices.
7. Inclusion in trademark searches for clearance purposes for both registers.

In conclusion, both the Principal and Supplemental Registers offer ways to protect trademarks, but they have important differences. The Principal Register, for unique trademarks, provides stronger legal protection, exclusive rights, and more credibility in court. The Supplemental Register is useful for trademarks that aren’t distinctive yet and offers some protection.

Navigating trademark registration and choosing the right register can be challenging. It’s a good idea to consult an attorney specializing in intellectual property law. They can guide you, ensure you meet legal requirements, and protect your brand. Attorneys play a crucial role in safeguarding your trademark and helping your business succeed in a competitive market.