Supplemental vs. Principal Trademark Register: What is the Difference?

 

Within the United Stated Patent and Trademark Office, there are two separate trademark “registers” that exist, namely the Principal and the Supplemental.  Typically when an applicant files a new trademark application, that application when ultimately approved and issued is defaulted to be on the Principal Register.  However, under some circumstances during the prosecution of the application, the examiner may recommend, or the applicant may have to voluntarily amend the application to the Supplemental Register.  Generally, “descriptive” marks are not entitled to the Principal register and instead must go on the Supplemental Register.  

 

The question becomes what is the difference between the two registers?  The Principal Register is thought to be stronger as it provides several advantages and presumptions, while the Supplemental does not.   The chart below sets forth those differences:

 

Principal

Supplemental

Provides protection for “distinctive” trademarks

Provides protection for only “nondistinctive” trademarks

Presumption of validity

No presumption of validity, therefore requiring a litigant to prove the validity of the trademark

Presumption of ownership, and provides constructive notice so as to eliminate an infringers good faith defense

No presumption of ownership or constructive notice

Can later become “incontestable” by filing a Section 15 affidavit

Cannot be incontestable

Can record with the United States Customs Services to prevent the importation of counterfeits

Cannot record with the United States Customs Services

Madrid Protocol applications can be based on principal register trademarks

Cannot file Madrid Protocol applications based off of a supplemental register trademark

Can initially file an application on an “intent to use” basis

Supplemental application cannot utilize an “intent to use” filing basis, rather it must be used in commerce

 

Given the disadvantages with the Supplemental register, why would an applicant amend their application to the Supplemental Register?  As stated above, “descriptive” marks must go on the Supplemental Register.  What typically occurs is an applicant will initially file a descriptive mark on the Principal Register, and later during the prosecution of the application the examiner will reject it on the grounds that the mark is “merely descriptive”.  As such, the applicant in some cases can overcome the rejection by amending the application to the Supplemental Register.  In other cases, even if the examiner believes a mark is descriptive, the applicant may argue that it has achieved acquired secondary meaning and therefore entitled to remain on the Principal Register.  While there are disadvantages to the Supplemental Register, there are several advantages that it does provide compared to not having any registration, such as:

 

  • Allows for a lawsuit for trademark infringement to be brought in Federal Court, just as a Principal registered mark would;
  • 3rd parties cannot register a confusingly similar trademark on the Principal or the Supplemental Register;
  • Registrants of Supplemental trademark can still use the ® notice;
  • After the trademark has been used and registered on the Supplemental Register for five (5) consecutive years, the registrant can reapply on the Principal Register.