Principal v. Supplemental Register

Part of building a successful business is knowing how to protect your intellectual property.  Trademarks, a type of intellectual property, are valuable assets for differentiating yourself from the rest of your peers.  Think of your favorite slogan, icon, or logo—odds are, you’re not just thinking about a design or phrase, but also the character, mood, and ethos that brand stands for.  You may have come up with the perfect name for your business, but that doesn’t mean the United States Patent and Trademark Office (“USPTO”) will agree with you—particularly if your name merely describes your goods or services.

The USPTO maintains two separate databases to allow you to register and protect your trademarks.  The Principal Register is the primary database for federally registered trademarks.  To be included on this register, trademarks must meet the USPTO’s requirements including, distinctiveness, functionality as a “source indicator,” and no potential for consumer confusion with other marks.  For a thorough review of the trademark application process, read our article 3 Steps to Register Your Trademark.

One ground for refusing registration is that the mark is too “descriptive.”  A mark is descriptive when it merely describes the product or service, and thus does not immediately resonate with consumers as a mark distinguishing your particular goods or services.  But we have good news: if your mark has been denied as too “descriptive” you can amend your application to the Supplemental Register.

The Supplemental Register is a database reserved for descriptive trademarks currently in use. What does that mean?  It means the USPTO will deny your application to the Supplemental Register if it denied your original application for a reason other than sheer descriptiveness.  It also means you must currently use your trademark, which can be proven by filing an “allegation of use” statement, specimens showing actual use, or a trademark registration issued by a foreign trademark register.

So, here’s some bad news: trademarks registered on the Principal Register become incontestable after five years, but trademarks registered on the Supplemental Register cannot become incontestable.  An “incontestable” mark provides conclusive evidence that the mark is registered and valid—as such, an accused infringer cannot argue that the mark is invalid for lack of secondary meaning.  In short, incontestability provides a major shortcut in litigation when its owner sues someone for using a similar mark in a confusingly similar way.  Since Supplemental Register trademarks cannot become incontestable trademarks, if an owner of a Supplemental Register trademark also wanted to sue someone for infringement, they would have to prove they own a valid mark—which means they must prove their mark distinguishes their goods or services in the public’s eye usually through secondary meaning.

Now for the good news: what’s so great about the Supplemental Register?  You’re probably wondering why you’ve never seen any Supplemental Register trademarks.  Truthfully, you probably have!  To the public, a Supplemental Register trademark appears the same as a Principal Register trademark.  Supplemental Register marks are included in all trademark searches, which means that your mark will serve as a bar to any new trademark applications for a mark similar or identical to your mark.  On top of it all, you can (and should) use the ® symbol on all Supplemental Register trademarks because this gives the public notice the mark is in use.  Note: the ® symbol may only be used on registered marks; if your mark is currently unregistered you should use the ™ symbol instead.

The Supplemental Register can also be a quicker way to register and protect a trademark because these trademarks are not published for opposition, which means you forgo the waiting period originally allotted to allow third-parties time to object to your application.  While this may seem like a sneaky way to beat the competition, keep in mind that the Supplemental Register requires a trademark to be in use!  This means the public must know you currently use your trademark—a much stricter standard than the typical intent-to use application on the Principal Register.

Lastly, the Supplemental Register can help your trademark acquire the elusive “distinctiveness” or “secondary meaning” requirement.  A trademark registered on the Supplemental Register for five years without an objection can serve as evidence of acquired distinctiveness.  That’s right, you can work toward achieving distinctiveness while on the Supplemental Register.  However, it’s important to note that this isn’t a guarantee; the USPTO examining attorney might require additional proof (such as proof of association to your good or service, or a third-party declaration recognizing the distinction).  But, on the bright side, Supplemental Register trademarks have a 10-year renewal, which means you can apply for the Principal Register while your mark is protected under the Supplemental Register!

By: Ryan Taylor – 09/12/16

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