Trademark Circular No. 4: The Principal vs. Supplemental Trademark Registers

The United States Patent and Trademark Office (“USPTO”) maintains two trademark registers, the (1) Principal and the (2) Supplemental Registers. A “Register” is simply an official list or ledger of items, much like a property deed register. Sometimes the USPTO Registers are referred to as “Registries.” 

It is easy to believe that the existence of two Registers means there are separate paths to trademark registration. That belief is not entirely correct, although you can file a trademark specifically designated for the Supplemental Register. In fact, a trademark applicant may not even consider which Register his or her trademark will be listed on until an Examining Attorney raises the issue in an Office Action. If it is not raised, the applicant may be oblivious to the issue. But it arises often enough that applicants should understand the implications of having one’s trademark listed on the Principal versus the Supplemental Register.

The Typical Scenario

The Examining Attorney refuses registration, stating that the applied-for trademark is descriptive. Descriptive trademarks are considered weak trademarks because they are non-distinctive.

For example, a trademark applicant may seek to register HAIR CUTTERS to identify his hair styling salon. The Examining Attorney refuses registration of the mark on the Principal Register because the mark describes the services the applicant offers and is, therefore, descriptive and non-distinctive. In this instance, the Examining Attorney may offer the applicant the option to amend his application to register the mark on the Supplemental Register or, alternatively, offer proof that the mark has “acquired distinctiveness.” More about that later.

Benefits and Drawbacks

The implications of having one’s trademark listed on the Supplemental Register are important. Placement on the Supplemental Register may affect the enforceability of the trademark and the strategy a trademark owner must adopt at a later date to move the trademark from the Supplemental to the Principal Register.

To understand these implications, it is helpful to first understand the advantages of a listing on the Principal Register. The benefits of the Principal Register are typically listed as:

1. Prima facie evidence of the validity of the mark, the registration, ownership, and the registrant’s exclusive right to use the mark in commerce;
2. Prima facie evidence of genuine use as of the filing date of the application;
3. Incontestability after five years of continuous use;
4. Constructive notice of the registrant’s claim of ownership of the mark;
5. Nationwide rights for the trademark holder subject to any superior rights of prior users;
6. The right to bring suit against infringers in federal court;
7. Access to statutory remedies, including the potential for enhanced damages and criminal penalties in qualifying counterfeiting cases, subject to statutory requirements and court discretion;
8. The ability to stop the importation of goods bearing infringing trademarks;
9. Rights under international conventions, including priority rights on foreign filings and the ability to register trademarks abroad based on registration in the United States; and
10. The right to use the federal registration symbol ®.

These ten benefits are the core justifications for registering a trademark. What, then, does an applicant give up by having a trademark listed on the Supplemental Register?

First, understand that the trademark applicant is offered registration on the Supplemental Register not because the trademark fails to function as a source identifier, but because, under U.S. trademark law, it is not distinctive. Registering a mark on the Supplemental Register provides limited benefits during the period in which the mark acquires distinctiveness. Those benefits include:

1. The ability to use the federal registration symbol ®;
2. The ability to bring an infringement action in federal court (remedies and presumptions may be limited); and
3. The ability for the registration to be cited by a USPTO Trademark Examiner against a third party seeking to register a substantially similar mark on the Principal Register.

An applicant should understand that the Supplemental Register does not confer full trademark rights. As a result, the owner may be at a disadvantage if sued by a third party for trademark infringement unless the owner can prove that the trademark has acquired distinctiveness.

How does an owner prove acquired distinctiveness? Under Section 2(f) of the Lanham Act (the statute pertaining to trademarks), a trademark owner establishes acquired distinctiveness, sometimes referred to as secondary meaning, by showing that, through use in commerce, consumers recognize the mark as identifying a single source of goods or services rather than merely describing them.

In some cases, an owner may rely on a declaration that the mark has been in substantially exclusive and continuous use in U.S. commerce for five years. This five-year period may be accepted as prima facie evidence of acquired distinctiveness. Although the five-year period is statutory, acceptance is discretionary. The USPTO may require additional evidence, such as advertising expenditures, sales figures, consumer or dealer declarations, or survey evidence, particularly where the mark is highly descriptive.

There is one other drawback relating to the Supplemental Register that trademark applicants should be aware of. An intent-to-use trademark application does not qualify for registration in the Supplemental Register. This limitation may have consequences for an applicant’s branding strategy. If an applicant is aiming to protect its trademark in advance of a product launch, for example, the applicant must be sure that its trademark is distinctive and not likely to be refused by the an examining attorney. If it is refused, there will be no Supplemental Register option to “save” the trademark This should underscore the importance of seeking the opinion of a qualified trademark attorney before filing.

In short, while registration on the Supplemental Register does not provide all the rights associated with the Principal Register, it offers limited benefits during the period in which a descriptive mark matures in the marketplace. For many businesses, particularly those launching with marks that describe their goods or services, the Supplemental Register can function as a foothold, securing federal recognition, deterring later filers, and preserving the ability to enforce rights while distinctiveness develops.

Applicants should also plan from the outset to build the evidentiary record necessary to demonstrate acquired distinctiveness. Through deliberate use, consistent branding, and proper documentation, a mark that begins on the Supplemental Register may later qualify for registration on the Principal Register, where the full benefits of federal trademark law reside.

On the other hand, registration on the Supplemental Register may not be a favorable option if the applicant determines that the strategic limitations of such a registration outweigh the benefits of obtaining registration at all. For instance, the Supplemental Register does not confer the legal presumptions or enforcement leverage that many businesses rely upon when policing their marks or asserting rights against competitors.

— Adam G. Garson, Esq.