A Tale of Two Registers: Principal Register vs. Supplemental Register
The United States Patent and Trademark Office (USPTO) has two registers where registered and pending trademarks are listed. The primary register is the Principal Register which lists trademarks that are distinct as brand sources and have met all the requirements for registration. The secondary (and lesser) register, known as the Supplemental Register, allows marks that are admittedly descriptive in nature or have been determined by an Examiner to be "merely descriptive" to still achieve trademark registration.
The Principal Register
By its name, it may be obvious that the Principal Register offers superior trademark registration protection. This is why most applications begin through the Principal Register and are only moved to the Supplemental Register when an Examiner refuses entry on the Principal Register and offers the Supplemental Register as an alternative.
In order to be registered and listed on the Principal Register, a trademark must meet the following USPTO requirements:
1. The mark must be distinct in nature (not descriptive or generic)
2. The mark must be currently used in commerce and interstate commerce.
3. Meet all other requirements posed by the USPTO and the Examining Attorney.
4. Must go through a 30-day publication period (either with no oppositions or overcome oppositions),
The Supplemental Register
The typical situation is that you've filed a trademark application and receive the dreaded Office Action, where the Examining Attorney states that your trademark is "merely descriptive."In some cases, you may be able to challenge the Examiner's claim by arguing that your trademark has achieved acquired secondary meaning and is therefore entitled to remain on the Principal Register. This is done by proving that the mark has been used in commerce for the last five years (at least). If you are unable to prove this, you may be given the option of amending your application to the Supplemental Register.
In order to be registered and listed on the Supplemental Register, a trademark must meet the following USPTO requirements:
1. Descriptive, surname, and geographical term marks all qualify for the Supplemental Register. Generic terms do not qualify,
2. The mark must actually be used in commerce. Therefore, Intent to Use applications must show use before being able to amend to the Supplemental Register.
A positive distinction to keep in mind is that while the Principal Register requires publication of the application, thus giving interested parties the ability to oppose the application, applications listed on the Supplemental Register aren't open for opposition. Therefore, registration is achieved much sooner.
So, How Are the Principal and Supplemental Registers Similar?
While there are differences between the Principal and Supplemental Registers, here are the similarities:
• Both allow you to use the federal trademark symbol (®).
• The USPTO will still reject applications containing marks that are confusingly similar to yours
• Both afford you the ability to sue infringers in federal court.
• Both put would-be infringers on notice and may act as a deterrent, allowing you to send a cease-and-desist letter if your mark is unlawfully used.
• Trademarks on both registers still appear in trademark searches for clearance.
What’s the Downside to Having Your Trademark on the Supplemental Register?
Well, there are challenges that registration on the Supplemental Register pose, namely, you don't have the presumption and validity of ownership of the mark that registration on the Principal Register gives you. Also, your mark won't have the incontestability that comes from having a mark that's been in continuous use for five years. Furthermore, owners of trademarks listed on the Principal Register can request that U.S. Customs and Border Protection exclude imports that violate their exclusive rights. Trademarks on the Supplemental Register are not afforded this right, which can be a powerful tool to prevent infringement.
Can You, at Some Point, Elevate Your Registered Trademark from the Supplemental Register to the Principal Register?
Yes, by applying for registration to the Principal Register after five years of use. However, there is no guarantee. Aside from showing continuous use of the mark in commerce for five years, you may be required to show proof of notoriety in the marketplace with a history of advertising, promotions and sales, and/or statements from consumers stating that your brand is a recognized source of your goods or services.
But challenges aside, the Supplemental Register is still a path to trademark registration. So, while the Principal Register is the gold standard for trademark registration, the Supplemental Register is a practical alternative to protecting your brand.