U.S. Trademark Registrations: Principal Register vs. Supplemental Register
Updated April, 2015
1. What types of trademark registrations are available at the federal level in the United States?
Under the federal trademark registration system, there are two different trademark registers: the Principal Register and the Supplemental Register. One of the requirements for registration is that the mark be distinctive (i.e., capable of distinguishing the goods and/or services of the owner from those of others). Marks possessing the requisite distinctiveness may be registered on the Principal Register. Marks that are not inherently distinctive (primarily, descriptive marks) but that otherwise meet the requirements for registration are registrable on the Supplemental Register; they may be registered on the Primary Register on a showing of acquired distinctiveness (i.e., secondary meaning; see FAQ #3, below).
2. What advantages are afforded by registration of a mark on the Principal Register?
Federal registration on the Principal Register offers a number of advantages for the trademark owner. These include:
- Prima facie evidence of the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services designated in the registration.
- A legal, rebuttable presumption that the registrant is the owner of the mark.
- Constructive notice of the claim of ownership of the mark.
- Listing of the mark in the USPTO’s online database.
- The ability to record the mark with U.S. Customs and Border Protection to stop the importation into the United States of infringing or counterfeit goods.
- The right to bring an action in federal court for infringement of the mark.
- The ability to use the registration as the basis for a trademark application in many other countries/jurisdictions.
- The right to use the “registered” (®) symbol with its mark when the mark is used on or in connection with the covered goods and/or services.
- The possibility that the mark may become incontestable after five years of registration.
- Provisions for treble damages, attorney’s fees, and various other remedies.
3. What is secondary meaning?
Secondary meaning, also referred to as acquired distinctiveness, arises when a nondistinctive mark becomes known to consumers as an indication of source for particular products or services as a result of the mark’s long-term and extensive use. The exact amount of use needed to demonstrate that a mark has achieved secondary meaning varies depending on the mark’s level of descriptiveness and consumer perception of the mark, but a presumption of secondary meaning may arise after five years of substantially continuous and exclusive use of a mark in commerce.
4. What types of marks are registered on the Supplemental Register?
Marks registrable on the Supplemental Register include:
- Descriptive marks that are capable of acquiring distinctiveness;
- Geographic terms; and
- Nondistinctive, nonfunctional trade dress.
5. What advantages are afforded by registration on the Supplemental Register?
Like a registration on the Primary Register, a registration on the Supplemental Register (i) entitles the owner to use a notice of federal trademark registration, such as the ® symbol;(ii) gives the owner the right to bring a trademark infringement suit in federal court, along with a claim of unfair competition; and (iii) can be cited by a USPTO (United States Patent and Trademark Office) examining attorney against a later-filed application to register a confusingly similar mark for related goods/services, even on the Principal Register.
6. 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 protection 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 arise with a registration on the Principal Register. In addition, a Supplemental Registration cannot be used to prevent the importation of infringing or counterfeit products. Finally, a Supplemental Registration can never become incontestable.
7. How and why does one obtain a registration on the Supplemental Register?
It is possible to file an application seeking registration on the Supplemental Register if, for example, one is certain that the USPTO will view the mark in question as descriptive. More often, however, the USPTO examiner will reject an application for registration on the Principal Register and give the owner the option to amend the application to the Supplemental Register. A mark must actually be used in commerce at the time the applicant seeks registration on the Supplemental Register; marks not in use may not be registered on the Supplemental Register.
8. Can one oppose registration of an application for the Supplemental Register?
No. Unlike applications for registration on the Principal Register, applications for registration on the Supplemental Register are not published for third-party opposition purposes. If a third party objects to the registration of a mark on the Supplemental Register, that party must seek to cancel the registration after it has been issued.
9. 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 owner has used the mark to a sufficient extent that it has acquired secondary meaning, the mark will be granted registration on the Principal Register, with all the protections afforded by such registration.
Additional INTA Resources
Topic Portal: Registration
United States Trademark Registrations: Principal Register vs. Supplemental Register