Trademark Principal Register vs Supplemental Register

Understanding the Different Types of Trademark Registration

The U.S. Patent and Trademark Office (USPTO) offers two registers for trademarks: the Principal Register and the Supplemental Register. The registers are official lists of each trademark registered with the USPTO. It is preferred to register trademarks on the Principal Register because its offers more benefits and protections. The Supplemental Register is provided for weaker, descriptive marks, but still provides significant benefits. This article explains the role of the registers and the differences between registrations on each register.

Principal Register

The Principal Register is the primary and most familiar register within the U.S. trademark system, offering the most comprehensive benefits and protections for trademark owners. Trademarks registered on the Principal Register enjoy several legal advantages, including the presumption of ownership and the exclusive right to use the mark nationwide in connection with associated goods or services listed in the registration.

During the registration process, the examining attorney will evaluate the mark in several areas, including whether there is a prior registration or pending application for a confusingly similar mark, as the existence of the same mark or a confusingly similar one can prevent a new trademark from being registered, and whether the applied-for mark is descriptive in nature. A descriptive mark is one that describes a feature, quality, or characteristic of the goods or services sold under the mark. To be eligible for registration on the Principal Register, a mark must be inherently distinctive, rather than descriptive. An inherently distinctive mark provides a unique identifier for the source of the goods or services to consumers. For example, the mark Carvana for online auto sales is distinctive, in contrast with Autos.com.

Breakdown of the Benefits of Registration on the Principal Register:

1. Prima facie evidence of:

A valid, enforceable trademark,

Registrant's ownership of the trademark, and

An exclusive right to use and continuous use of the trademark in commerce;

2. Prevents the registration of a later filed trademark applications for conflicting marks;

3. Use of the registration symbol ® with the trademark, which provides constructive notice of the trademark to all potential infringers;

4. Priority of right to use the trademark throughout the US;

5. The ability to bar the importation of infringing goods through US Customs and Border Protection;

6. The use of the trademark to pursue foreign trademark registrations with foreign countries through the Madrid Protocol or under the Paris Convention;

7. The registration holder is allowed to bring a trademark infringement action in federal court rather than state court. Federal courts deal with fewer cases and are usually more adept at handling more complex issues;

8. Enhanced remedies, including enhanced treble damages in egregious cases, such as willful infringement.

Marks that are merely descriptive of the products or services they represent will face obstacles to registration on the Principal Register. If a mark is not inherently distinctive, it must have acquired distinctiveness through extensive use in commerce, which typically means the mark has become widely recognized by the public as identifying the source of the goods or services. The trademark act requires that there must actual evidence of acquired distinctiveness before a descriptive mark can be registered.

Registration on the Supplemental Register

The Supplemental Register is a secondary option provided by the United States Patent and Trademark Office (USPTO) for descriptive marks that are presently in use in commerce, but not inherently distinctive. Unlike the Principal Register, where marks must be distinctive either inherently or through acquired secondary meaning, a supplemental register trademark is for those marks that have not yet achieved this level of distinctiveness. However, in the case of an intent to use application for a trademark that is not yet in use in commerce, the applicant cannot opt for the Supplemental Register. An intent to use application rejected on the basis that the mark is descriptive cannot be converted to the Supplemental Register and will lapse.

Marks on the Supplemental Register are descriptive of the goods or services, consist of descriptive geographic terms, or consist of surnames, and as such, cannot be registered as a principal registration without evidence of distinctiveness. Such marks may eventually achieve distinctive status on the Principal Register if they gain secondary meaning, evidenced by public recognition and exclusive use over a period of time. The trademark owner may seek registration on the principal register once acquired distinctiveness or secondary meaning of the mark is established.

While a supplemental registration does not offer all the protections of a federal trademark registration on the Principal Register, it still provides valuable benefits to trademark holders. A trademark examining attorney evaluates whether a mark descriptive during the examination process. If it is descriptive, the examiner may recommend that the applicant request transfer to the supplemental register. However, it should be noted that generic marks are not eligible for the supplemental register. The supplemental register has a number of benefits, but provides reduced protections relative to a principal registration.

Breakdown of the Benefits of Registration on the Supplemental Register:

1. Use of the registration symbol ® with the trademark;

2. The registration will be used by trademark examiners to bar future trademark registrations for any confusingly similar trademark to the mark on the Supplemental Register.;

3. The use of the trademark to pursue foreign trademark registrations with foreign countries through the Madrid Protocol or under the Paris Convention;

4. The registration will appear in the federal trademark database, making it easy to find by others, and will act as a deterrent to others filing marks which might be confusingly similar;

5. The registration holder is allowed to bring a trademark infringement action in federal court rather than state court. Federal courts deal with fewer cases and are usually more adept at handling more complex issues.

However, the protections afforded by a supplemental register trademark are more limited. For example, such marks cannot achieve incontestable status after five years of use, which is a significant benefit available to marks on the Principal Register. Moreover, they are not presumptively valid in legal proceedings, requiring the trademark owner to provide additional proof of the mark’s distinctiveness.

Key Differences Between Principal and Supplemental Registrations

A Principal Registration of a mark is prima facie evidence of the exclusive right of the owner to use the mark, whereas a Supplemental Registration is not. While the owner of a supplemental registration can bring a suit for trademark infringement, Supplemental Register is not based on full protection of the federal trademark laws and it is based on "common law" trademark rights. These are rights that are not created by statutes but handed down from case law.

Unlike a principal registration, there is no presumption that a trademark on the Supplemental Register is distinctive of the applicant's goods and services. A supplemental registration also does not constitute a constructive use for priority proceedings. A trademark registered on the Principal Register automatically gains nationwide priority of use. This means the owner of a principal registration has the right to stop anyone from using the trademark in United States based on the trademark registration. Only those who used a competing mark before the filing of a trademark registration will have superior rights, and those rights will be limited geographically to where the mark was used prior to the trademark registration.

Trademarks on the Supplemental Register do get a Presumption of Rights

Supplemental Register marks do not gain the presumption of enforceability and ownership afforded to a principal registration. They only have superior rights based on the actual geographic use of the mark in commerce. Nationwide protection would only occur through the actual use of the mark in commerce throughout the nation. Additionally, a mark on the Supplemental Register can never gain incontestability status which is allowed for marks which have been on the principal register for at least five years. Once a mark gains incontestability status, the mark cannot be challenged or invalidated for certain reasons, such as being confusingly similar to another mark or that the mark is descriptive with respect to the goods or services involved. An incontestable mark can still be invalidated but those grounds are limited. They include whether the mark was obtained in a fraudulent manner; if the mark becomes generic for the good or services used (e.g. aspirin for acetaminophen); comprises scandalous, deceptive, or immoral matter; or any mark that disparages or falsely suggests a connection with any person.

Constructive Notice for Principal Registrations

A mark on the Principal Register is considered to put everyone on notice of the use of the mark in the United States, thereby eliminating any defense of good faith ignorance of the mark. A supplemental registration does not create that effect. This means that they will need to be actually notified to your use of the mark, by way of sending a cease and desist letter or other equivalent actions. Notice is extremely important with regard to the ability of the registrant to receive damages from the infringement of the mark. Recovery of profits and damages are only allowed if the acts by the infringer were committed with knowledge that such imitation of the mark is intended to be used to cause confusion, or cause mistake, or deceive. As stated above, knowledge is only imputed on the infringer by a mark on the Principal Register. If not, the infringer must be actually informed of the mark.

While the Supplemental Register does not create as many protections as the Principal Register, it is still worthwhile to register a mark on the Supplemental Register as you do gain those benefits listed above, and in five years, you can place the mark on the Principal Register thereby gaining all the benefits of a federal trademark.

Moving to the Principal Register

After a mark has been registered on the Supplemental Register for five years, a trademark owner may decide to reapply for trademark registration on the Principal Register, provided that the necessary requirements are met. This process involves filing a new trademark application, as marks cannot be directly "amended" from the Supplemental Register to the Principal Register. The trademark owner must submit evidence to establish acquired distinctiveness, demonstrating that the mark now functions as a source identifier in the minds of consumers.

How to Acquire Distinctiveness

One of the key pieces of evidence for establishing acquired distinctiveness is the continuous and substantially exclusive use of the mark for at least five years. However, while five years of use is a strong indicator that a mark may have acquired distinctiveness or secondary meaning, it is not always sufficient on its own. The U.S. Patent and Trademark Office (USPTO) may require additional evidence, such as consumer surveys, advertising expenditures, or declarations from consumers or experts, to fully establish that the mark has indeed acquired secondary meaning.

New Pending Application for Principal Register

When reapplying, the new trademark application is separate and distinct from the supplemental registration with a new priority date. This means that the original filing date of the mark on the Supplemental Register will not carry over to the Principal Register application. Successfully moving a mark from the Supplemental Register to the Principal Register enhances the legal protections available to the trademark owner and solidifies the mark’s status as a valuable business asset.

Seek Experienced Counsel

Trademark owners should consult with an experienced trademark attorney to determine the best course of action for their specific situation. Experienced trademark attorneys can help you avoid the potential pitfalls of selecting highly descriptive trademarks, conflicting with prior registrations, and infringement issues. The attorneys at Sierra IP Law, PC have decades of experience in handling trademarks. Contact our office for a free consultation.