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What Is The Difference Between A Supplemental And Principal Trademark Registration?
When registering a trademark, there are technically two forms of registers that you can register on: the Principal and Supplemental register. Both are federal registers maintained by the USPTO. The Supplemental Register is the secondary list maintained by the USPTO for registered trademarks that do not qualify for the Principal Register. A mark may be placed on the Supplemental Register as long as it is in actual use in commerce and can in some way distinguish the applicant’s goods or services from others.
What are the differences between a Principle and Supplemental Register?
The Principal Register is what most applicants request to file under, as it technically provides slightly more protection than than the Supplemental Register. Here are a few examples:
Principal Register trademarks are kept for the most unique and individualized trademarks.
Once your trademark is listed on the Principal Register, you are the “presumed owner” in all 50 states.
In cases of infringement of your trademark, because Principal registrants are recognized as the owner in all 50 states, it is significantly more difficult for another party to try to refute your ownership. In other words, the Principal Register offers you the most concrete legal protection over your trademark.
The Supplemental Register is the only other register your trademark can be listed on, and it offers slightly less protection than the Principle Register.
“The Supplemental Register is a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become an indicator of source” (USPTO).
Though the Principle Register offers the most protection and people are more familiar with this type of register, your trademark may be put on the Supplemental Register, especially if it is deemed “descriptive”. For example, if you receive an office action, the examining attorney may refuse registration claiming that the mark is “merely descriptive.” However, this does not mean that the proposed mark is not ripe for a trademark; if the attorney believes your mark has the potential to identify the source of the goods or services you provide, they may allow you to amend the application from the Principal Register to the Supplemental Register.
What qualifies for the Principle Register?
The more unique and exclusive your proposed mark is, the greater your chances for obtaining registration on the Principal Register. On the other hand, the more your proposed mark describes your product or service, the lesser your chances of obtaining principal registration.
What qualifies for the Supplemental Register?
Simply put, “descriptive” marks. For example, if you have ever heard of a company with the name of it’s products/services, and then “Shop”, it’s likely on the Supplemental Register. For example, if someone tried to trademark the name “The Flower Shop”, it’d likely end up on the Supplemental.
Benefits of the Supplemental Register:
The mark will appear in trademark searches and clearance searches
The applicant can use the R registration symbol
The Supplemental registration is consecutive with marks on the Principal Register, so the registration number does not give away which register your trademark is listed under
The registration on the Supplemental Register may be used to prove exclusive use of a mark for a five-year period, one of the aspects of proving distinctiveness and “incontestable status” for registration on the Principal Register.
It protects the mark while distinctiveness is acquired
From a marketing perspective, it allows people to more easily identify the goods/ services you offer
Cons of the Supplemental Register:
A mark on the Supplemental Register cannot achieve “incontestability,” meaning someone can provide some sort of proof for earlier use with a confusingly similar mark, and has a better chance of moving to cancel a registration at any time
In federal court, you will not automatically be the presumed owner of the trademark
Once you are officially filed under the Supplemental Register, you cannot amend your mark to be put on the Principle Register. You must file a new application and start the process again
Even after five years of continuous use, you will still need more information to claim that your mark has achieved the distinctiveness needed to file under the Principle Register. For example, you might need proof of acquired distinctiveness beyond the continuous use, like notoriety, advertisement of the mark, and third parties advocating that your mark now represents a particular good or service
Pros of the Principle Register: Frankly, you want to be put on the Principle Register because it offers you the most protection against third parties who try to use your trademark, as mentioned above. Moreover, the Principle Register provides the registrant with the presumption of the validity of the mark, prima facie evidence of ownership of the mark.
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