What's the difference between the Principal Register and the Supplemental Register
“What’s the difference between the Principal Register and the Supplemental Register?” is one of the most commonly asked questions by clients seeking to register a new trademark.
The Federal Trademark Register in the United States consists of two separate registers, the Principal Register and the Supplemental Register. The Principal register affords protection for very distinctive marks or marks that have acquired secondary meaning, whereas the Supplemental Register provides protection for non-distinctive marks that are capable of acquiring distinctiveness.
There are three categories of strong marks, namely fanciful marks (i.e. EXXON, KODAK, and XEROX; coined terms), arbitrary marks (i.e. APPLE; marks comprised of ordinary terms with no relation to the applied for goods and services), and suggestive marks (i.e. MICROSOFT; marks that require one to use their imagination to relate to the applied-for goods and services but does not describe the goods and services). Any marks outside of these categories are likely considered descriptive or generic, and thus weak and unprotectable.
Generic terms are not registrable on either of the Registers because no one should be given exclusive right to use terms that generically refer to certain goods or services (e.g. KLEENEX and BAND-AID). However, arguably a descriptive mark can become enforceable if it obtains a secondary meaning, also known as “acquired distinctiveness” by becoming a source identifier for particular goods or services due to the long standing and extensive use of the mark.
The Supplemental Register can be considered as an alternative when the Examiner rejects registration of the applied-for mark on the grounds of descriptiveness and recommends registering a weak, descriptive mark that is capable of acquiring distinctiveness on the Supplemental Register. Once Applicant obtains a Supplemental Registration, it is possible to obtain a registration on the Principal Register in the future based on the mark's acquired distinctiveness.
One caveat for amendment to Supplemental Register is that in order to proceed on the Supplemental Register, Applicant will be required to show proof of commercial use of applied-for mark (e.g. actual example of a mark used on the actual goods). Further, some of the limitations of Supplemental Registry include:
- No presumptions of validity, ownership and exclusive rights to use the mark;
- No recordal with United States customers Services allowed to stop importation of counterfeit products;
- No opportunity to become incontestable.
That said, although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
- The registrant may use the registration symbol ®;
- The registration is protection against registration of a confusingly similar mark;
- The registrant may bring suit for infringement in federal court; and
- The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
If the applied-for mark is already in use and the mark is important to the company, obtaining registration on the Supplemental Register would provide some federal protection. Additionally, registration on the Supplemental Register can expedite the registration process by reducing time and money spent on prosecuting descriptive marks, and avoiding potential oppositions by third parties. Please note, however, that the resulting registration would be cancelled by third parties based on alleged prior rights.
In conclusion, before dismissing the idea of amending to the Supplemental Register, please consider that Supplemental Registration could be the best alternative to the Principal Registration for descriptive marks.