PRINCIPAL VS. SUPPLEMENTAL REGISTRATION IN THE UNITED STATES

There are many benefits to registering your trademark. However, when people think of “registering a trademark,” they may be unaware that there are actually two types of trademark registration in the United States. 

The “default” register that usually springs to mind is the Principal Register. Then there is the lesser-known Supplemental Register, which also confers some – but not all – of the legal benefits of “trademark registration.”

Benefits of Trademark Registration on Principal Register

Let’s examine the benefits of trademark registration on the Principal Register:

1. Presumption of validity of mark. This set of legal presumptions means that the Owner of the mark is the true Owner and that the mark itself is valid, having undergone thorough examination by the USPTO.
2. Constructive notice of trademark rights. The public, including infringers, are deemed to have notice of the Owner’s rights to any mark on the Principal Register, which is denoted by the Owner’s ability to use the ® symbol next to its mark once the mark is granted registration.
3. Presumption of exclusive use. Principal Register marks are presumed to be in use exclusively by the Owner.
4. Block infringing imports. Using the e-Registration program offered by the U.S. Customs and Border Protection, an Owner can prevent imports into the United States that infringe on its protected mark.
5. Incontestable status. Owner may file to have its mark declared Incontestable after five years’ use and registration.
6. Access to federal courts. If a mark is being infringed upon, the Owner has the right to sue the infringer in U.S. federal courts.
7. Exclusion of other similar marks. Registered marks may be used by the USPTO to block registration of similar, later applied-for marks.
8. Basis for international registration. Under the Madrid Protocol, registered marks in the U.S. may apply for similar protections in foreign jurisdictions that are party to the World Intellectual Property Organization.

Supplemental Register of Trademarks 

If a mark has been refused registration on the Principal Register because the Examiner states that the mark is “merely descriptive,” for example, a case may arise where there is some “good news” for the Applicant.

The good news is that there is a separate register for marks that are deemed to be too merely descriptive or non-distinctive to indicate or be recognized by the public as distinct marks that indicate the source of goods or services.  

An example of such a descriptive mark could be SOFT for a brand of pillows. The SOFT mark would be refused registration on the Principal Register by the USPTO, as being merely descriptive of the goods (i.e., pillows) that are being sold under the mark. It would be presumed that any company selling pillows would indeed describe their pillows as “soft,” for instance.  

Such a descriptive mark could be deemed to be eligible for registration on the Supplemental Register, which means that it would have some – but not all – of the benefits and legal protections extended to marks on the Principal Register. Specifically, only the following protections apply to marks on the Supplemental Register:

1. Notice that rights to mark are claimed. Again, this notice may be given by the Owner’s use of the ® symbol along with the mark. The difference about this notice to the public, for marks on the Supplemental Register, is that Supplemental registration does not confer the same legal presumptions that come with Principal Registration, as discussed above.
2. Access to federal courts. Owners of marks that are being infringed upon may file actions based on their Supplemental Registration in U.S. federal courts.
3. Exclusion of other marks. These marks may also block registration of subsequent similar marks.
4. Basis for international registration. These marks may also apply for registration in foreign jurisdictions under the Madrid Protocol; however, each application will be viewed in light of the foreign jurisdiction’s own trademark laws, which may not allow for registration of descriptive or other Supplemental Registered marks.

A mark that is initially registered on the Supplemental Register may still be registered on the Principal Register after the Owner can prove that the mark has acquired distinctiveness. Typically, this is achieved by submitting a new trademark application that makes such a claim, after the Owner has used the mark in commerce for five years.

Need a Trademark Attorney?

If you have trademark questions or need a trademark attorney, we’ve registered and protected thousands of trademarks.At Sand, Sebolt & Wernow, we’ll guide you through the process of developing and registering a unique trademark that effectively identifies your product or service. And if you conduct business in more than one country, you can trust we have the expertise to lead you through the international registration process. Contact us today.