Principal Register vs. Supplemental Register

United States Trademark
Principal Register
Supplemental Register
Not All Registrations Are
Created Equal
• The Lanham Act recognizes, and authorizes the
USPTO to register eligible trademarks on, two
separate and very different “registers”:
– Trademarks placed on the Principal Register are called
Principal Registrations
– Trademarks placed on the Supplemental Register are
called Supplemental Registrations
• The Principal Register and the Supplemental
Register separate strong marks from weak marks
The Principal Register
• Strong marks are registered on the Principal Register and are
fully capable of trademark significance at the time of registration.
• Three categories of strong marks, in descending order of
– Fanciful Marks
• “Coined” or invented terms
– Arbitrary Marks
• Ordinary, everyday terms that are appropriated for products having no
relation whatsoever to the term
– Suggestive Marks
• Hint at, but do not describe, the product for which they are used
• A weak mark that becomes strong:
– Descriptive mark that has obtained secondary meaning
The Supplemental Register
• Weak marks do not initially have trademark
significance. If registrable at all, they are registered
on the Supplemental Register.
• There are two categories of weak “marks”:
– Descriptive Marks
• Descriptive of the goods or services for which they are proposed
to be used and are registrable on the Supplemental Register
– Generic Terms
• Consist of words that are the common name for the products or
services with which they are being used and are not registrable
on the Principal or Supplemental Register under any
Benefits Common to Principal and
Supplemental Registrations
Initial term of 10 years, renewable for successive 10-year
Double protection against subsequent registration of
confusingly similar marks
first by USPTO internal examination
second by opposition/cancellation proceedings after publication
Right to use the official symbol “®” as notice of federal
Right to sue infringers in federal court and have federal law
control key issues of validity, ownership, infringement,
injunctions, and damages
Ability to obtain improved trademark protection in other
countries under certain international treaties
Benefits Unique to the
Principal Register
1. Constructive notice nationwide of:
The registrant’s claim of ownership of the registered mark
The registrant’s claim of priority of use of the mark; and
The registrant’s claim that the mark is effective from the filing date
of the federal application (which can be earlier than the date of
registrant’s actual first use in commerce)
2. Right to expand actual use nationwide where registrant previously
used trademark only within a small region, subject to certain defenses
3. More “robust” registration with stronger trademark rights
4. Permits recordal with United States Customs Service to block
importation of products/materials bearing infringing/counterfeit
Benefits Unique to the
Principal Register
5. The registration creates an evidentiary presumption that the trademark
is “distinctive” rather than “descriptive”
6. The registration is prima facie evidence that the:
• Trademark is valid (i.e., eligible subject matter, complies with all legal
requirements, operates as a trademark, not abandoned)
• Registrant is the owner of the registered trademark
• Registrant has the exclusive right to use the trademark nationwide
Note: A registration can become conclusive evidence if the registrant
makes the registration “incontestable” on or after the fifth anniversary of
registration date, subject to certain defenses or defects
Why Supplemental Registration?
• Allows marks that otherwise would not be federally
protected to enjoy some of the benefits of federal
trademark registration
• Expedites the registration process through the
efficiencies of a simpler internal USPTO
examination process
• Reduces the likelihood of time-consuming Office
• Eliminates the requirement that the application be
published for opposition and the risk of facing
opposition proceedings
Beware the Limitations
The benefits unique to marks on the Principal
Register are not afforded to Supplemental
Registration. Limitations of Supplemental
Registration are:
1. No constructive notice nationwide of the
registrant’s claim of ownership of the registered
2. No constructive use (and priority of use)
nationwide of the registered mark effective from
the filing date of the federal application
3. No evidentiary presumptions
Beware the Limitations
4. No certainty of ability to expand actual use
nationwide when registrant previously used
trademark only within a small region
5. No recordal with United States Customs Service
6. No availability of “incontestability” status
7. Weaker registration process
Movement between Principal and
Supplemental Registers
• Supplemental to Principal –
– Required if a Supplemental Register application is
clearly eligible for the Principal Register
– Not permitted once a Supplemental Registration has
been obtained even if mark becomes eligible for
Principal Register
• Principal to Supplemental –
– Permitted BEFORE the Principal Register
application becomes abandoned or has its rejection
affirmed on appeal, PROVIDED that use of the mark
in commerce has commenced as of the time of the
The Bottom Line
Supplemental Registration is a second-best
alternative to Principal Registration
may be the only and therefore best alternative
for some marks

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