The issue of Supplemental Register vs. Principal Register frequently arises during the US trademark application process. If you’ve read my article titled “What is the Supplemental Register for US Trademarks?,” you already know that the United States Patent and Trademark Office (USPTO) maintains two separate trademark registers. To recap, the Principal Register is reserved for trademarks that are considered under the law to be “distinctive.” In contrast, the Supplemental Register is for non-distinctive marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. I encourage you to read my previous article regarding the Supplemental Register so that you better understand the information presented here.
Supplemental Register vs. Principal Register – Similarities
Although there are some very important differences between the Supplemental Register and the Principal Register in terms of benefits and protections, I think it may be best to first summarize how they are similar. A registration on either the Principal Register or the Supplemental Register:
- provides you with the right to use the ® registered trademark symbol in conjunction with your trademark
- prevents the registration of trademarks that are likely to cause confusion with your trademark
- may be used as a basis for seeking protection of your trademark in certain foreign countries through the Madrid Protocol
- is listed in the USPTO database, which puts the public on notice of your trademark registration and potentially deters others from adopting a confusingly similar trademark
- may be used as a basis for filing a lawsuit for trademark infringement in federal court
Supplemental Register vs. Principal Register – Differences
But, what are the differences when it comes to Supplemental Register vs. Principal Register? Well, a registration on the Principal Register is prima facie evidence of (1) the validity of the registered trademark, (2) ownership of the registered trademark, and (3) the nationwide exclusive right to use the registered trademark in commerce in connection with the products/services listed in the registration. This essentially means that the owner of a trademark registered on the Principal Register never has to rely on common law trademark rights as a basis for pursuing a trademark infringement lawsuit against an alleged infringer. Rather, the owner gets to walk into court and simply present the Certificate of Registration as evidence of the validity, ownership, and exclusive right to use the trademark in commerce. No further proof of validity, ownership, or use is required. The burden then shifts to the defendant to present evidence and arguments that the use of the allegedly infringing mark doesn’t violate the rights of the registered trademark owner.
On the other hand, a registration on the Supplemental Register doesn’t provide those valuable benefits. Instead, the owner of a registration on the Supplemental Register would have to prove ownership of the trademark and that the trademark is valid (distinctive) by presenting and authenticating actual evidence. Moreover, the owner would have to demonstrate to the satisfaction of the court that there has been sufficient use of the mark in commerce such that the owner has acquired enforceable common law trademark rights in the relevant geographic area. As you can imagine, this can be an extremely expensive and time-consuming endeavor that may ultimately be unsuccessful.
The other major difference regarding Supplemental Register vs. Principal Register is that a Principal Register registration that’s over five years old can only be challenged under very limited circumstances. In addition, a mark that has been registered on the Principal Register for over five years can become “incontestable” by filing the Section 15 Declaration of Incontestability. Conversely, a registration on the Supplemental Register can be challenged at any time on any grounds, and a mark registered on the Supplemental Register can never achieve incontestable status.
Still Confused About the Two Registers?
Although the Supplemental Register provides some limited benefits and protections, they are not nearly as broad and comprehensive as those you receive with a registration on the Principal Register. That’s why you want to obtain a registration on the Principal Register if at all possible.
I’m experienced US trademark attorney Morris Turek. If you’re still a little unsure about the differences between the Supplemental Register and the Principal Register and how they might apply to your particular situation, please feel free to contact me for an absolutely free consultation. I may be reached via email (firstname.lastname@example.org), by phone at (314) 749-4059, or by sending me a brief message through my contact form (below). I look forward to speaking with you soon.