The Federal Trademark Register in the United States consists of two separate registers, the Principal Register and the Supplemental Register. As trivial and unexciting as this topic sounds, it is essential for trademark owners to understand core differences between the two registers, know what advantages each registry offers, and be able to make an informed decision whether to seek trademark registration on the Principal or on the Supplemental Register.
As a form of introduction, trademarks fall into four categories – arbitrary, fanciful, suggestive, and descriptive – in connection with the goods/services they identify. Arbitrary, fanciful and suggestive marks are those marks that bear no or little relationship to the actual goods and services offered under the mark. These marks are referred to as “inherently distinctive marks,” and the Principal Register is designed to offer trademark protection to such inherently distinctive marks. Marks registered on the Principal Register enjoy certain benefits and presumptions that are not available to the marks registered on the Supplemental Register.
Descriptive marks are marks that merely describe the goods or services with which they are used. Descriptive marks are entitled to registration on the Principal Register only upon proof that the relevant consumers associate the mark with the goods and services provided by the owner of that particular mark. Until then, those marks can only be registered on the Supplemental Register.
The following table lists certain benefits and presumptions of each register:
While there are certain advantages to having a Supplemental Register mark, it is clear that the scope of protection accorded to the marks registered on that register is narrower than the scope of protection enjoyed by the marks registered on the Principal Register. It is still beneficial to obtain federal protection, even if it is on the Supplemental Register, to ensure that the mark is accorded some scope of protection.
To avoid the dilemma of filing the mark on one register or the other or amending the mark from the Principal to the Supplemental Register following the refusal by the USPTO, it is recommended to adopt inherently distinctive marks as source identifiers of one’s goods and services. Clark.Law is here to help you with your mark selection that will contribute to the ultimate success of your business.
Yelizaveta Leah
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- US Trademarks: Principal Register v. Supplemental Register - December 14, 2020
