U.S. Trademark Registrations: Principal Register vs. Supplemental Register
What are Principal and Supplemental trademark registrations?
The United States has two sections of the Federal Trademark Register: the Principal Register and the Supplemental Register. Most marks are registered on the Principal Register. The Supplemental Register is reserved for nondistinctive marks that are capable of acquiring distinctiveness (i.e. “secondary meaning”), but have not yet done so.
What is secondary meaning?
Secondary meaning, which is also referred to as “acquired distinctiveness,” attaches when a non-distinctive mark becomes known to consumers as a designation of source for particular products or services due to the mark’s long-term and extensive use. The exact amount of use needed to prove secondary meaning varies according to each mark’s level of descriptiveness, but a presumption of secondary meaning arises after five years of substantially continuous and exclusive use of a trademark in commerce.
What types of marks are registered on the Supplemental Register?
Marks registrable on the Supplemental Register include:
What rights are provided by registering a mark on the Supplemental Register?
- descriptive marks that are capable of acquiring distinctiveness,
- geographic terms, and
- nondistinctive, nonfunctional trade dress.
A registration on the Supplemental Register grants its owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods.
How does a registration on the Supplemental Register differ from a registration on the Principal Register?
A registration on the Supplemental Register does not provide all the protections of a registration on the Principal Register. For example, a Supplemental Registration does not convey the presumptions of validity, ownership and exclusive rights to use the mark that attach with a registration on the Principal Register. A Supplemental Registration cannot be used to stop importation of counterfeit products. Also, a Supplemental Registration can never become incontestable.
How and why does one obtain a registration on the Supplemental Register?
One may file an application seeking registration on the Supplemental Register, if for example, one is certain the USPTO will view its mark as descriptive. More often, however, the Patent and Trademark Office rejects an application for the Principal Register and gives its owner the option to amend the application to the Supplemental Register. A trademark must actually be used in commerce at the time the applicant seeks registration on the Supplemental Register; trademarks not in use may not be registered.
Can one oppose registration of an application for the Supplemental Register?
No. Applications for registration on the Supplemental Register are not published for third party opposition, unlike applications for registration on the Principal Register. If a third party objects to an application for the Supplemental Register, it must seek to cancel the registration after it issues.
Can a Supplemental Registration be converted to a Principal Registration?
No. A Supplemental Registration cannot be converted into a Principal Registration. Instead, the owner of the Supplemental Registration can file a new application for a Principal Registration of the mark. If the trademark owner has used the mark sufficiently that it has acquired secondary meaning, the mark will be granted a Principal Registration, with all the protections it affords.
Additional INTA Resources
Topic Portal: Registration
United States Trademark Registrations: Principal Register vs. Supplemental Register