Wait! What? There are different kinds of federal trademark registers?
The answer is Yes. There are two types of federal trademark registers – The “Principal Register” and the “Supplemental Register.”
In this blog I hope to provide some insight on the differences between trademarks registered on the Principal Register and the Supplemental 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.
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:
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.
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:
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.
Registration of a trademark on the Principal Register provides the following rights in addition to those rights provided by the Supplemental Register:
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.
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.
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.