When you file your application for registration of your trademark, the United States Patent and Trademark Office (USPTO) will accept applications for two different registers: the Principal Register and the Supplemental Register. These Registers list all the trademarks that have been granted protection by the USPTO. The requirements of trademarks and rights for those trademarks differ greatly depending on which register the mark is registered in. Therefore, it is critical that any applicant understands the benefits, rights, and drawbacks of these registers in order to maximize their rights and ensure they are applying to the correct register.
Distinctive Versus Non-distinctive:
The Principal Register is the primary register for trademarks that are distinctive, meaning that they distinguish the trademark’s goods and services. What makes a trademark distinctive? Distinctiveness is a sliding scale of the uniqueness of the trademark which includes fanciful, arbitrary, and suggestive trademarks. A fanciful trademark is the most unique because it has a made up or invented name and as such, only have meaning in relation to their goods or services. For example, Exxon has no meaning outside of its connection as a gas station. An arbitrary trademark is a trademark that with a meaning that is not related to the good or service in connection with the trademark. For example, Apple for computer and phone products. Suggestive trademarks suggest a quality or characteristic of the goods or services associated with it. For example, Greyhound (suggestive of speed) or Netflix (suggestive of movies online). It is important to note that for a trademark to be suggestive, it cannot outright describe a characteristic of a trademark as the consumer must create the connection between the trademark and the good or service.
If a trademark is not fanciful, arbitrary, or suggestive, then the trademark is not distinctive and the trademark is descriptive or generic. A descriptive trademark is a direct connection between the trademark and the good or service such as Coca-Cola. A generic trademark is the common name for the good or service such as bubble wrap or aspirin. If a trademark is not distinctive, then it cannot be on the Principal Registry. However, it is possible for a descriptive trademark (not a generic trademark) to acquire distinctiveness. If a trademark has been used exclusively and continuously for a period of at least five years and the mark has obtained a secondary meaning, it is possible to argue that the trademark has acquired distinctiveness. But what does that actually mean? It means that consumers must believe that the trademark is a brand connected with the good or service and not the good or service itself. As stated above, Coca-Cola is an example of a descriptive trademark, but it is clearly a well-known registered and protected trademark despite the fact that “Coca” describes the original ingredient and “Cola” describes it as a specific soda. Coca-Cola is one of the successful examples of a good so closely associated with its trademark that it acquires a second meaning and becomes distinctive.
What happens to non-distinctive trademarks? Descriptive trademarks may be allowed to register on the Supplemental Register. Generic trademarks are not afforded any trademark rights and are not allowed on either register. Additionally, there are other bases as to why a trademark may be denied registration on the Principal Register. You can learn more about that here.
Principal Register Versus Supplemental Register
There are many important distinctions between the Principal Register and the Supplemental Register but there are also some crucial overlaps. A trademark that is registered on the Principal Register or the Supplemental Register has the following rights:
- You are able to use the registered trademark symbol ® with your trademark. Note that trademarks that are not registered on the USPTO’s Principal Register or the Supplemental may not use this symbol and are restricted to using the trademark symbol ™.
- The USPTO will reject applications for trademarks which the USPTO deems are likely to cause confusion with your trademark.
- You are able to use this registration as a basis for registration in certain foreign countries through the Madrid Protocol and other international agreements.
- It puts the public on notice of your trademark registration and may deter others from using a similar trademark.
- You may bring a lawsuit for trademark infringement in federal court.
Nonetheless, registration in the Principal Register is typically preferable over registration in the Supplemental Register because the Principal Register grants the registered trademark the full benefits and rights under federal trademark laws while the Supplemental Register only grants the benefits listed above. The Principal Register also allows the following rights and benefits:
- You have protection and priority in all 50 states as opposed to state-level registrations which only offer limited protections.
- You have prima facie evidence of the validity of the registration, the registrant’s ownership, the exclusive right to use the trademark, and continued use since the filing date of the trademark application. This means that the registrant is accepted as correct until proven otherwise which creates a burden of proof for the opposing party.
- You have the ability to bar counterfeit or goods with infringing trademarks from being imported into the country via the Department of Customs.
- Your trademark becomes incontestable after five years of additional use in commerce meaning it can only be challenged in very limited circumstances.
- The public is put on notice of your trademark’s registration.
- You can bring litigation in federal court and you have additional legal remedies for infringement including treble damages and attorney’s fees.
- You can file for the intent to use while the Supplemental Register required actual use of the trademark in commerce.
- You can increase the value of your business and credibility through a developed brand.
As you can see, the rights and benefits of the Principal Register far outweigh those in the Supplemental Register and understanding the differences between the two can be complicated. Before you apply to register a trademark, it is essential that you consider these differences and how your trademark will be evaluated by the USPTO. At KEW Legal, we can assist you with the strategy to best protect your trademark and your business. To protect your trademark today, please contact us here.
