R symbolDid you know that there are two trademark registers maintained by the United States Patent and Trademark Office (PTO)? They are referred to as the “Principal” and the “Supplemental” Registers.  Typically, registration in the Principal Register is most desirable and is reserved for trademarks that the PTO determines are distinctive or have acquired distinctiveness. When clients ask us about the benefits of trademark registration, we usually refer to the benefits of registration in the Principal Register.  They are:

1. Prima facie evidence of the validity of the registered mark and registration;

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;

6. The right to bring suit against infringers in federal court;

7. Statutory remedies, such as mandatory treble damages  and criminal penalties in counterfeiting cases;

8. The ability to stop importation of goods bearing infringing trademarks;

9. Rights under international conventions such as priority rights on foreign filings and the right to register trademarks abroad based upon registration in the United States; and

10.  The right to use the federal registration symbol ®.

The Supplemental Register, on the other hand, is like a “holding tank” for descriptive trademarks, which have not acquired distinctiveness. Here’s an example: Say you wish to register HAIR CUTTERS to identify your new hair styling salon so you file a trademark application with the PTO.  To your disappointment, the PTO refuses to register your trademark because the mark is descriptive of the services that you intend to provide. Instead, it offers you the option to register it on the Supplemental Register.  Why?  Because descriptive marks are not registrable in the Principal Register.  That’s the purpose of the Supplemental Register.

If your trademark is registered in the Supplemental Register, when it acquires distinctiveness you can apply to have it transferred to the Principal Register. You may wonder how a descriptive trademark acquires distinctiveness.   That’s when in the minds of the public the primary significance of your trademark or service mark is to identify the source of the product or service rather than the product or service itself.  This is also called “secondary meaning.”  HAIR CUTTERS acquires distinctiveness when the consuming public thinks HAIR CUTTERS refers to your business rather than to hair cutters. If you have been using a mark for five years or longer, it is presumed that your mark has acquired secondary meaning.

Registration in the supplemental register is not without its benefits:

  • The trademark owner may still use the federal registration symbol ®;
  • The trademark owner may bring an infringement action in federal court;
  • the registration may be cited by a USPTO trademark examiner against a third party who wishes to register a substantially similar mark on the Principal Register;
  • and the registrant can subsequently apply to have his mark registered on the Principal Register once the mark has been in use for a period of time, usually five years.

The federal protections provided by the Supplemental Register are limited compared to those of the Principal Register. Unlike the Principal Register, a registration on the Supplemental Register is not entitled to the rebuttable presumptions of validity,  incontestability or ownership;  one cannot file an intent to use application for registration on the Supplemental Register, hence, a trademark must be in actual use in commerce; supplemental registration does not entitle the trademark owner with the advantage of registering the trademark with U.S. Customs; the Supplemental Register does not constitute constructive use of the mark; and it does not confer a nationwide right of priority against third parties.

The supplemental register can be used strategically to “lock up” a descriptive trademark while the registrant is seeking to establish secondary meaning. Such was the case with AT&T some years ago when it attempted to register the five bars design used to indicate signal strength in cell phones as a trademark to identify telecommunication services.  The USPTO refused it registration in the Principal Register but permitted registration on the Supplemental Register.  AT&T’s application generated a hue and cry from other cell phone manufacturers, particularly, Nokia, who requested the USPTO to deny the application because the mark was descriptive and generic.  Nonetheless, AT&T’s application was granted.  So if your trademark qualifies for registration in the Supplemental Register, there are advantages; and with the passage of time, it may later qualify for registration in the Principal Register.

— Adam G. Garson, Esq.