The U.S. Patent and Trademark Office (USPTO) offers trademark applicants two potential registers on which to file their trademark applications – the Principal Trademark Register and a Supplemental Trademark Register.
Principal Register vs. the Supplemental Trademark Register?
Most federal trademarks are registered on the Principal Trademark Register. A mark registered on the Principal Register is entitled to all the rights and protections provided under U.S. trademark law and is generally the most desirable as it provides the strongest level of trademark protection.
However, not every mark qualifies for registration on the Principal Trademark Register and when this happens, the only other option for federal registration may be on the Supplemental Trademark Register. While not as powerful as the Principal Register, the Supplemental Trademark Register can be very useful and should not be dismissed as a possible basis for obtaining trademark registration.
Trademark law requires a number of factors in order for a mark to qualify for registration on the Principal Register. The most common of these requirements usually concerns “sufficient distinctiveness.” All trademarks must be capable of distinguishing your goods and/or services from those offered by another. A mark lacks sufficient distinctiveness if it is not particularly unique or is descriptive when used in connection with your designated goods and/or services.
Which Register is Right For My Mark?
Trademarks that would not qualify for registration on the Principal Register include marks that are merely descriptive (but capable of acquiring distinctiveness); surnames; geographic terms; and marks that are nondistinctive, nonfunctional trade dress. For these marks, the Supplemental Trademark Register may provide some measure of protection for trademark owners seeking to protect their brand.
What Are the Benefits and Differences in the Supplemental Register?
Marks registered on the Supplemental Register are entitled to use the registered trademark symbol ® to denote federal registration. Marks registered on the Supplemental Register also show up on federal trademark searches so subsequent applicants for similar marks that may cause confusion, mistake or deception with the registered mark would not be allowed registration on the Principal or Supplemental Registers. Finally, marks registered on the Supplemental Trademark Register may subsequently qualify for registration on the Principal Register after five (5) years or after the mark has acquired distinctiveness through continued use or marketing, whichever comes first.
Registration on the Supplemental Trademark Register does not afford the same rights as the Principal Register. The Supplemental Trademark Register does not provide prima facie evidence of trademark ownership, the validity of the trademark registration, or the applicant’s exclusive right to use the mark. In addition, a Supplemental Registration cannot be used to prevent the importation of infringing or counterfeit products. Finally, a Supplemental Registration can never become incontestable.
In this sense, the rights of trademark registration on the Supplemental Trademark Register are reduced in comparison to the Principal Register. Notwithstanding these limitations, it is still a worthwhile option for trademark owners who cannot obtain trademark protection on the Principal Register but who want to secure some rights and benefits of federal trademark registration.
For more information on the Supplemental Trademark Register, don’t hesitate to contact us, (800) 769-7790 or via email. Our trademark attorneys are happy to explain the differences between the Principal and Supplemental Trademark Registers and discuss which may be right for your trademark application. We offer complimentary telephone consultations and we’re always happy to hear from you!