What’s the difference between the Principal and Supplemental Register?
The Principal and Supplemental Register are the two Registers a trademark applicant can end up on after filing a trademark application. What’s the difference? Which one is better? Which one do I want to end up on? You guessed it: The Principal Register.
The Principal Register is reserved for those trademarks that are the most unique and provides the owner of a mark registered on the Principal Register with a presumption of ownership in all 50 states. That means when you walk into court, someone else has the duty of rebutting that you are the owner of that registered mark.
So what is unique and how do I get on the Principal Register? Uniqueness can be a made up word, like Kodak® or Kleenex®. Or it can be a word commonly used in English, but not related to the product, good, or service. Think of Target® for shopping or Apple® for computers. So what happens when your mark isn’t “unique” and your mark is rejected from the Principal Register? Is the Supplemental Register a worthwhile option? What’s the difference?
Well the Supplemental Register is a Register for those marks that haven’t acquired distinctiveness yet. A distinctive mark is one that is unique and should be registered on the Principal Register. A mark that is not unique must be distinctive to the business in a consumer’s mind such that the consumer associates the mark with the good or service. But a mark that is not unique and not yet distinctive can benefit with registration on the Supplemental Register.
Supplemental Register still provides someone with a federally registered trademark. You can use the federally registered trademark symbol (i.e., ®) to provide notice of your federally registered mark. In other words, the public would and should understand that your mark is registered, you value your intellectual property and branding, and that you’re serious about protecting your rights. A mark registered on the Supplemental Register may act as a strong deterrent to others attempting to register and/or use a similar mark to yours.
Registration on the Supplemental Register still provides protection against other confusingly similar marks that others try to register in the future. So if someone else attempts to register a mark that consumers would confuse with your mark registered on the Supplemental Register, that person’s mark should be denied registration by the US Patent & Trademark Office.
Additionally, being on the Supplemental Register still allows you to sue infringers in federal court and having federal law control the key issues of validity, ownership, infringement, defenses, and damages rather than state law. However, an owner of a mark on the Supplemental Register will have to prove that the mark is distinctive in the consumer’s mind in the geographical area in which you are suing the infringer. Customers in that area have to recognize your brand, good, or service based on the mark.
So while it’s preferable to be on the Principal Register, having a mark on the Supplemental Register can still provide important benefits and protection for your brand.
Principal and the Supplemental Register
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Grell & Watson, Patent Attorney, Trademark Copyright IP Lawyer