TWO TRADEMARK REGISTERS: PRINCIPAL REGISTER & SUPPLEMENTAL REGISTER
A trademark is a word, name, symbol, logo, design, or any combination thereof that helps distinguish the goods or services offered by one seller or provider from the goods or services of others and, further, indicates the source of the goods and services.
In the United States, a trademark owner establishes their rights through use of the mark in commerce with specific goods or services. Trademark rights are generally limited to the geographic area in which the goods or services are provided. To maximize protection of the rights nationwide, the owner must register their trademark with the United States Patent and Trademark Office.
Federal registration of a trademark gives notice to the public of the registrant’s claim of ownership of the mark; thereby, preventing registration of confusingly similar marks. Registration allows the owner to use the trademark symbol ®. And, registration helps the owner enforce their rights against trademark infringement. Additional information about the importance of trademark registration is available here.
There are two trademark registers: Principal Register and Supplemental Register
The U.S. Constitution authorizes Congress to regulate commerce, and Congress has used that authority to enact laws for the registration of trademarks used in commerce. Specifically, Congress established the U.S. Patent & Trademark Office in Section 1 of Title 35 of the United States Code (35 U.S.C. § 1) and delegated to the USPTO the responsibility of registering trademarks in Section 2 (35 U.S.C. § 2).
The Trademark Office maintains two trademark registers, both of which provide benefits to trademark owners. The Principal Register is reserved for trademarks that are distinctive. The Supplemental Register is for trademarks that are not yet eligible for registration on the Principal Register, but may, over time, become distinctive.
The Principal Register affords the most protection of registered trademarks. As such, trademark applicants generally seek registration on the Principal Register.
What is a distinctive trademark?
Distinctive trademarks are considered the strongest and afforded the most protection. To determine whether a trademark is distinctive, first determine the trademark’s category. All trademarks are either fanciful, arbitrary, suggestive, descriptive, or generic. The first three types of trademarks are the strongest. Fanciful trademarks are invented words that only have meaning in relation to the goods or services, like GOOGLE for online searches. Arbitrary trademarks are actual works that have no association with the trademarked good or service, such as APPLE for computers. Suggestive trademarks are words that suggest some quality or the goods or services, but do not describe it outright, like NETFLIX for online streaming service. For more information about what makes a strong or weak trademark, see this article.
Distinctive trademarks are eligible for registration on the Principal Register
A distinctive trademark is a strong trademark because it makes it easy for consumers to identify the source of goods or services. A strong trademark is unique and creative, making it unlikely to be used by a competitor. Weak trademarks are descriptive of the goods or services, or generic of a type of good or service, and can be difficult to register and/or defend in court.
Arbitrary, fanciful, and suggestive trademarks are considered inherently distinctive, and are eligible for registration on the Principal Register. Only distinctive trademarks are eligible for registration on the Principal Register.
What are the benefits afforded to trademarks registered on the Principal Register?
According to the Trademark Office, the benefits of federal trademark registration on the Principal Register include:
- Listing the trademark in a database of registered and pending trademarks, which provides public notice to anyone searching for similar trademarks. Searchers will see the trademark, the goods and services used in connection with the trademark in the registration, the filing date of the associated trademark application, and the date the trademark was granted registration.
- Registration provides a legal presumption of trademark ownership for the listed owner. In federal court, a trademark registration certificate is used to prove ownership and eliminate the need for copious amounts of evidence.
- United States trademark registration can be used as a basis for filing for trademark protection in foreign countries.
- Registration provides the right to bring a lawsuit concerning a trademark in federal court.
- Registration allows an owner to use the registration symbol ® with a trademark. The "R" indicates that the mark is registered with the USPTO. Using the registration symbol may help deter others from using your trademark or one that is confusingly similar to the mark.
- Registration allows the owner to record the registration with US Customs and Border Protection (CBP). The CBP can stop the importation of goods bearing an infringing trademark.
What is a descriptive or generic trademark?
The weakest categories of trademarks are descriptive and generic trademarks. A descriptive trademark describes some aspect of the good or service without identifying or distinguishing the source of the good or service. For example, ALL BRAN for cereal or CREAMY for yogurt. Descriptive marks are only registrable under certain circumstances, such as when the trademark acquires distinctiveness through use in commerce over a period of many years. A generic trademark is actually not a trademark. It is a common name used for a good or service and cannot be federally registered. Examples of generic trademarks include BAGEL SHOP for a bagel shop or THERMOS for insulating containers.
Where can you register a descriptive trademark?
A descriptive trademark could end up on the Principal Register or the Supplemental Register. Section 1052(f) of Title 15 of the United States Code (15 U.S.C. § 1052(f)) states that a descriptive trademark is registrable on the Principal Register if it has been used by the applicant and become distinctive of the applicant’s goods in commerce. The use must be substantially exclusive and continuous by the applicant in commerce for five years prior to the date of the distinctiveness claim. A trademark is distinctive of the applicant’s goods in commerce when it has acquired a “secondary meaning.” A secondary meaning occurs when the trademark is so associated in the public mind with certain goods that the mark identifies and distinguishes the applicant's goods from a competitor's goods. When these requirements are satisfied, a descriptive trademark can be eligible for registration on the Principal Register.
What if a trademark is not eligible for the Principal Register?
If a trademark is not registrable on the Principal Register, it may be eligible for the Supplemental Register. For example, if a descriptive mark is missing one of the above-mentioned statutory requirements of five years of exclusive and continuous use or distinctiveness, the mark could end up on the Supplemental Register. If the trademark examining attorney who is reviewing your application refuses your registration, the applicant may respond by amending the application to seek registration on the Supplemental Register. This provides trademark protection, while giving the applicant time to satisfy the use and distinctiveness requirements. However, the Supplemental Register does not afford the applicant the same level of protection against trademark infringement as the Principal Register.
What is the Supplemental Register?
According to the Trademark Office: “The Supplemental Register is a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become an indicator of source.” Once a trademark applicant is refused registration on the Principal Register, the applicant may respond by submitting evidence in support of registration; in addition to, amending the application to seek registration on the Supplemental Register.
What benefits does the Supplemental Register afford the registrant?
The Supplemental Register does not provide all the benefits of the Principal Register, but it gives the registrant the following benefits:
- Use of the registration symbol ® with the registered mark in connection with the designated good or service. This provides notice to the public of the registration and protects against third parties using confusingly similar marks.
- The good or service is included in the USPTO’s database of registered and pending marks.
- Gives notice to the USPTO trademark examining attorney, which protects against confusingly similar marks in applications filed by third parties.
- Registrants may use the registration as a basis to bring a lawsuit for trademark infringement in federal court.
- Registration may provide a filing basis for a trademark application for registration in certain foreign countries, pursuant to international treaties.
How do the protections provided by the Principal Register and Supplemental Register compare?
|Benefit Provided||Principal Register||Supplemental Register|
|The right to use the ® registered trademark symbol in connection with the good or service.||Yes||Yes|
|Serves as a basis for filing a lawsuit for trademark infringement in federal court.||Yes||Yes|
|Protects against the registration of confusingly similar marks with the USPTO.||Yes||Yes|
|Provides a presumption of validity for the registered trademark.||Yes||No|
|Is prima facie evidence of the exclusive right to use the registered mark nationally.||Yes||No|
|Provides a legal presumption that the registrant owns the mark and has the right to use it.||Yes||No|
|Registrants can file a declaration of “incontestability” after five years.||Yes||No|
As the chart shows, the Principal Register is advantageous for trademark owners and the more desirable option. It provides stronger legal protections and presumptions. Registrants on the Supplemental Register have additional legal hurdles to overcome when bringing an infringement action in court, which can make such a lawsuit more costly and time consuming. Still, the Supplemental Register is often the best default option when a trademark does not meet the requirements for the Principal Register.
Contact an Experienced Trademark Lawyer
If you want to protect your trademark though federal and/or state registration, or have any questions about the trademark registration process, then schedule a free consultation with Nolan IP Law today!
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