The Supplemental Register - What is it? How is the Supplemental Register Different than the Principal Register?

As you can imagine, registrations on the Principal Register are better than registrations on the Supplemental Register. That begs the question as to whether registration on the Supplemental Register is good enough. Let’s get into it.  

Benefits of Registration on the Principal Register:  

When people refer to a trademark “Registration” they are generally referring to marks registered on what is known as the “Principal Register”. The Principal Register gives you all of the rights afforded to a federally registered trademark. These include the following:  

• You have a presumption of the exclusive right to use the mark in association with the identified goods and services throughout the United States.  
• You can say the trademark is “Registered.”
• You can use the ® symbol.  
• Your mark has a presumption of Ownership and a presumption of Validity.  
• You can sue for trademark infringement in Federal Court.  
• You can seek “Incontestable Status” for your mark after 5 years of continuous registration and use.  
• You can use the registration as a basis for registration of your mark in foreign countries.  
• You can record your registration with the U.S. Customs and Border Protection Service to prevent infringing/counterfeit goods from entering the country.  
• Perhaps most importantly, your trademark registration is publicly available at the USPTO’s record system, which is the place where everyone performs their trademark searches to determine if they can use a potential mark without causing infringement. This means that your trademark registration serves as a public notice function and can help prevent others from using similar and/or infringing marks.
• The USPTO can use your mark to deny similar marks from registering. 

Without question it is best to have your trademark registered on the Principal Register. However, that does not mean that registration on Supplemental Register does not have significant value.  

Benefits of Registration on the Supplemental Register:  

While registration on the Supplemental Register does not give a trademark owner all the rights that a registration on the Principal Register does, registration on the Supplemental Register provides the following rights: 

• You can say the trademark is “Registered.” 
• You can use the ® symbol.  
• You can sue for trademark infringement in Federal Court.  
• Perhaps most importantly, your trademark registration is publicly available at the USPTO’s record system, which is the place where everyone performs their trademark searches to determine if they can use a potential mark without causing infringement. This means that your trademark registration serves as a public notice function and can help prevent others from using similar and/or infringing marks.  
• The USPTO can use your mark to deny similar marks from registering.

In my opinion, registration of a mark on the Supplemental Register provides the most important benefits of a trademark registration – that is you can say your mark is “Registered” and you can use the “®” symbol. In addition, your registration on the Supplemental Register can help prevent others from using “infringing” marks because your trademark registration provides a public notice function of your use and ownership of the mark. In addition, the USPTO can use your registration to reject similar marks from registering in connection with similar goods and services.  

Another benefit of trademarks registered on the Supplemental Register is that their trademark rights get stronger over time the more they are used. In addition, the owner of a trademark registered on the Supplemental Register can seek registration of the trademark on the Principal Register after adequate use of the mark over time. In many situations, use of the mark for 5 years provides adequate use for moving a trademark from the Supplemental Register to the Principal Register, but 5 years is not a specific requirement.  

What You Don’t Get When Your Mark is Registered on the Supplemental Register: 

Registration of a trademark on the Principal Register provides the following rights in addition to those rights provided by the Supplemental Register:  

• You have a presumption of the exclusive right to use the mark in association with the identified goods and services throughout the United States.  
• Your mark has a presumption of Ownership and a presumption of Validity.  
• A mark registered on the Principal Register has a date of constructive use as of the filing date of the application.  
• Your mark may become incontestable after five years of continuous use.  
• You may register the trademark with the U.S. Customs and Border Protection Service to block the importation of goods that use infringing trademarks.

In summary, if a trademark is registered on the Supplemental Register, the trademark owner does not have a presumption of federal ownership. Therefore, if someone infringes the trademark and the trademark owner sues them, the trademark owner would have additional hurdles to overcome in the litigation. Or, said another way, if someone is accused of infringing a trademark registered on the Supplemental Register, they would have additional defenses they could levy against the trademark they are accused of infringing.  

Why are Some Marks Registered on the Supplemental Register v. the Principal Register?  

The Principal Register is reserved for trademarks that are “distinctive” or “strong” in nature. This means that the consuming public can quickly associate the trademark with the owner’s business or brand. In trademark language we often refer to these strong and distinctive trademarks as “arbitrary” or “fanciful.” Due to their uniqueness and strength, these marks are granted all of the rights afforded a trademark registration, which is why they are allowed to register on the Principal Register. 

However, not all trademarks are created equal. Some marks, from a trademark-perspective, are “weak” in nature. In trademark language we often refer to weak trademarks as “descriptive” marks.  Despite their “weak” moniker, these marks can still serve as good trademarks, they can even serve as great trademarks. Dare I say it, a weak trademark can even become a strong trademark over time. (I know, how confusing). It just takes some additional time for these weak marks to develop recognition with the consuming public, thereby making them strong marks. Let me explain.  

As one example, consider the trademark “California Pizza Kitchen.” While I’ve never been to a “California Pizza Kitchen,” I recognize the brand. (Oh, the power of trademarks). From a trademark standpoint, the mark “California Pizza Kitchen” is a weak mark. I say this because it is a highly descriptive mark. Indeed, “California Pizza Kitchen” was a pizza kitchen that started in California. (Surprise). However, over time, with consistent use, advertising, policing and registration of the trademark, the initially weak mark “California Pizza Kitchen” became a strong mark by gaining recognition in the consuming public’s mind.  

The Supplemental Register was created to give initially weak trademarks protection as they develop and increase in strength. Once they achieve adequate strength, they can be moved to the Principal Register.  

Conclusion:  

Without question, it is best if a trademark can be registered on the Principal Register. However, if the USPTO is only willing to allow a trademark to be registered on the Supplemental Register, it is far better to have a registration on the Supplemental Register as opposed to no registration at all. In practice, it has been my experience that the differences between whether a trademark is registered on the Supplemental Register as opposed to the Principal Register very rarely come up. And any deficiencies due to registration on the Supplemental Register can be compensated by implementing a proactive trademark strategy, that may include comprehensive use of the mark, policing the mark, filing additional trademark applications, among other strategies. 

If you have any questions regarding trademark rights or need help with trademark registrations, trademark strategy or trademark litigation, please contact Chris Proskey, Intellectual Property Attorney at the BrownWinick Law Firm.