Most brand owners don’t realize it, but the United States Patent and Trademark Office has two lists of trademarks. The primary register is the Principal Register. This is the register that’s reserved for distinctive trademarks that meet all the requirements for registration.
A secondary record – known as the Supplemental Register – allows brands to attain a trademark that admittedly is descriptive in nature.
Trademark Principal Register
Passage of the Lanham Act created both the Supplemental and Principal Registers. Being listed on either of these records provides certain protections, but only the Principal Register offers the most complete level of trademark registration. This is why most supplemental filings occur only after the initial application is refused entry on the Principal Register.
For a trademark to be listed on the federal government’s primary source of record, it must meet USPTO requirements for distinctiveness. Afterwards, it will need to be published and move successfully through an opposition period.
To be listed on the Principal Register, a trademark must meet the following requirements:
- Be distinctive or have acquired distinctiveness.
- It must go through a 30-day opposition period following publication.
- It must meet all other requirements for registration.
The Supplemental Register has numerous differences from the Principal, but the most important is distinctiveness. If your trademark registration application is found to be descriptive, you’ll have to prove acquired distinctiveness or settle for the Supplemental Register. Fortunately, your trademark can later be placed on the Principal Register if you eventually meet the requirements.
There are three types of trademarks that will initially meet the distinctiveness requirement in nearly all instances. These trademark types are the strongest available:
Fanciful trademarks are unique and completely original trademarks. They offer the strongest protection available. Examples include Pepsi, Xerox and Exxon.
These are ordinary terms that are unrelated to the goods and services being applied for. Examples of arbitrary trademarks include Apple for computers and Lotus for software.
Suggestive trademarks do not describe specific goods or services. They instead require consumers to use their imaginations. Examples include Microsoft (e.g. suggests microcomputer software) and Netscape (e.g. suggests the internet’s landscape).
A trademark that has acquired distinctiveness does not need to fall under any of these subtypes. ‘Just Bulbs,’ ‘Select Auto Imports’ and even the color ‘white’ in regard to gunpowder have been trademarked by creating a secondary meaning in the minds of consumers.
Principal Register vs Supplemental Register
A trademark that is unique or has experienced exclusive use by a brand for a long period of time will likely qualify for the USPTO’s principal register. This is one of the main differences when it comes to the Principal Register vs Supplemental Register question.
There are also many other differences between the two. Since trademarks listed on the Supplemental Register don’t meet all necessary qualifications for full protection, there are numerous benefits that you’ll miss out on. The following are advantages of principal registration:
Presumption of Valid Trademark
Once your trademark has been published on the Principal Register, a presumption of ownership and validity exists. This is because it’s gone through the appropriate opposition period, a USPTO examining trademark attorney approved the application and the federal government issued a registration. This provides significant advantages in a court of law.
The presumption puts the burden of proving you’re not the rightful owner solely on any opposing party. Owners of trademarks on the Supplemental Register, however, will have to prove that a trademark is associated with their brand in the eyes of consumers.
Continued Exclusive Use
For a trademark to remain valid, it must be used continuously or be granted excused nonuse. By maintaining placement on the Principal Register, there’s a presumption that you’ve engaged in continued exclusive use.
Third parties hoping to file a Trademark Cancellation of your trademark will face additional legal hurdles due to this. Placement on the Supplemental Register doesn’t create this presumption – even if your use has been continued and nonstop.
Trademark registration and being listed on the Principal Register are not the maximum level of protection you can secure. If you can show five years of continued use of your trademark, you may file for incontestable status.
Doing this makes it more difficult for third parties to challenge your rights in court. Trademarks listed on the Supplemental Register cannot attain incontestable status. Only after they’ve been moved to the Principal Registry can they gain this protection.
Intent to Use Trademarks
There was a point in American history when use in commerce was required prior to filing a trademark application. This changed when the Intent to Use Trademark was introduced. The new application process provided trademark owners with certain registration benefits based on their bona fide intent for commercial use.
Supplemental Register placement, however, requires that actual use have taken place. If you file for the Principal Register based on an intent to use, you won’t be able to amend your application to the Supplemental Register until after you prove use has occurred.
30-Day Opposition Period
Although trademarks listed on the Supplemental Register are published in the Official Gazette, they don’t go through the traditional 30-day opposition period. This month-long publication gives third parties a chance to oppose your trademark if they’d be adversely affected by its registration.
By being listed on the Principal Register, trademarks provide constructive notice of trademark rights. An assumption is created through this that any potential violator should be aware of the registration status. This increases the likelihood of maximum compensation if you ever encounter trademark infringement.
Trademarks listed on the Supplemental Register do not serve as constructive notice.
Trademarks that meet all requirements and are listed on the Principal Register have additional tools to fight international infringement. U.S. Customs and Border Protection (CBP) has a program that will exclude imports that may violate your trademark rights. Items on the Supplemental Register are not eligible for this.
Time Period for Registration
If you file your trademark on the Supplemental Register, you’ll receive registration the moment it’s published in the Official Gazette. This process can take much longer for brand owners seeking placement on the Principal Register. Even if everything goes right during the application process, it can take eight months to a year before receiving your registration notice.
Can I Choose Between Registers?
Trademark owners can’t choose which list their trademark will be placed on. If your trademark is merely descriptive and has not acquired distinctiveness, it can only be placed on the Supplemental Register. If the USPTO examining trademark attorney feels that your trademark is distinctive, it can only be listed on the Principal Register.
Supplemental and Principal Register Similarities
Although there are differences between the Supplemental and Principal Registers, they share many similarities as well. The following are the similarities between supplemental and principal trademark registration:
- Both allow use of the federal trademark symbol (®).
- The USPTO will reject trademark applications that are confusingly similar.
- International trademarks can be based on registration.
- Ability to sue infringers in federal court.
- Both act as a deterrent to potential infringement.
- Both create a basis for sending trademark cease and desist
- Both allow your trademark to show up in trademark searches for clearance.
The Principal and Supplemental Registers both provide substantial protections, but the Principal Register is still preferable.
Amend from Supplemental to Principal Register
The USPTO makes it fairly easy to amend your trademark application from the Principal Register to the Supplemental Register in the event that your application receives a descriptiveness refusal.
To move from a supplemental registration to a principal registration for a descriptive trademark, you’ll need to prove acquired distinctiveness. USPTO examining trademark attorneys may view five years of continued use as evidence of acquired distinctiveness. This isn’t a guarantee, though, and they may request additional proof. Any of the below examples will be considered when deciding whether your trademark has gained a secondary meaning in the market:
- Extensive marketing campaigns and large advertising expenditures.
- Evidence that notoriety has been achieved.
- Consumer declarations attesting to brand association.
When filing for the Principal Register based on five years of use, you don’t have to be concerned with the registration date. If your trademark was in use for three years prior to being registered, for instance, you can file another application two years following registration.
Additionally, you can file to the Principal Register at any point you feel the trademark has acquired distinctiveness. Please see our supplemental register page for more information.
Please contact us today for any issues related to the principal register.