The United States Patent and Trademark Office (USPTO) maintains two separate registers for approved registered trademarks and service marks: the Principal Register and the Supplemental Register. Most trademark applicants file their trademark registration application aiming to secure immediate registration onto the Principal Register; however, that is not always the case nor does it have to be the end of the road to registration. A refusal onto the Principal Register may warrant an acceptance onto the Supplemental Register instead.
The two federal registers do not provide the same scope of legal protection as the other. The Principal Register is the primary register; therefore, the strongest legal protections available are enforced for trademarks and service marks registered on this index. Registration on the Supplemental Register serves a different purpose than to offer significant legal enforcement advantages. Whether you are an entrepreneur launching a new brand, a trademark attorney responding to a USPTO Office Action, or a registered trademark owner evaluating trademark strategies, it is crucial to comprehend the differences between the two registers in order to make the most informed decisions when navigating trademark registration.
Principal Register
The Principal Register is the primary federal register for registered trademarks and service marks approved by form of application by the USPTO. This primary index is reserved for trademarks and service marks that have been deemed “distinct” by an examining attorney at the USPTO. For a trademark to be considered distinctive, the mark must be capable of identifying the source of goods and/or services the mark is commercially used in connection to. A trademark may qualify for registration on the Principal Register if the mark is inherently distinctive or once the mark has acquired distinctiveness with time and use.
Important Note: A trademark application with a Section 1(a) filing basis is likely seeking registration onto the Principal register. A Section 1(a) filing basis indicates the proposed mark is currently being used in commerce in connection with the goods and/or services class(es) identified in the trademark registration application.
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Inherently Distinctive Marks
There are certain types of trademarks that are generally, categorically, or inherently distinctive. Often times, these marks are eligible for immediate approval onto the Principal Register without having to provide the USPTO with proof that consumers recognize the mark as an identifier for a brand. These types of trademarks are fanciful marks, arbitrary marks, or suggestive marks. Fanciful marks are words that were invented for the sole purpose to function as a trademark. Arbitrary marks are common language words used in unrelated and irrelevant context. Suggestive marks strategically hint at characteristics or features of the goods and/or services the mark is commercially used in connection to, without directly describing them.
You can find more information of the different categories of registered trademarks in our Trademarks and Service Marks Defined article.
Marks that Have Acquired Distinctiveness
Marks that are not inherently distinctive, yet have become recognizable to consumers as an identifying source of a brand, are eligible for registration on the Principal Register. This concept is commonly referred to as acquired distinctiveness. Applicants must submit evidence reasonably proving that at the time of filing, the consumer consensus view the mark as a distinguishable identifier of the goods and/or services a brand offers. Proof of acquired distinctiveness may look like:
Long-Term Use of the Mark
One of the most critical factors considered by examiners at the USPTO is the length of time the mark has been in continuous use in commerce. A mark that has been consistently used commercially for a longer time is likely to have formed an association to whatever goods or services the mark is used in connection to. It is commonly advised for applicants to wait three to five years before filing a new application and declaring acquired distinctiveness for a mark on the Supplemental Register. Five years of commercial usage of the mark is highly recommended for a successful declaration of acquired distinctiveness, although five years of usage alone does not immediately guarantee approval for the Principal Register.
Significant Advertising Expenditures
The marketing and advertising efforts a trademark applicant applies in order to establish their brand presence to consumers is highly considered by examining attorneys in acquired distinctiveness cases. The repeated exposure serves as an argument for the mark becoming a source identifier. Examples of evidence that demonstrate significant advertising efforts may include annual advertising expenditures, TV or radio advertisements, digital marketing campaigns, social media campaigns, email marketing campaigns, print advertisements, or trade publication advertising.
Strong Sales Figures
The commercial success of a brand can make a significant difference when proving a case of acquired distinctiveness. If a mark on the Supplemental Register is associated with a company who holds a strong brand identity and has a high sales volume, consumers are likely to recognize the mark and make the connection. Thus, examiners are more inclined to substantiate an applicant’s declaration of acquired distinctiveness and approve for registration on the Principal Register. Examples of evidence that demonstrate sales volume may include annual sales revenue, number of units sold (if a product) or number of customers served (if a service), market share, sales growth over time, or the geographic scope of sales.
Media Recognition
Media coverage that is independent from the applicant themselves or the brand itself serves as compelling evidence demonstrating consumer recognition. Media recognition may include digital or physical news articles, magazine features, interviews, industry publications, or industry awards. Such evidence proves that the public recognizes the trademark as an identifier for a specific brand or business.
Important Note: Each of the above examples of evidence alone cannot guarantee the establishment of acquired distinctiveness. To successfully prove a mark has acquired distinctiveness, it is most persuasive to have a combination of multiple substantiations to help ensure a trademark is registered.
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The Advantages of Registered Trademark on the Principal Register
Being the primary index, the benefits of registration on the Principal Register are focused on the scope of legal enforcement and protection.
Use of Registration Symbol
The registered symbol “®” is permitted for use once a trademark is successfully registered on either the Principal Register or the Supplemental Register. Read more about the permissions to use any of the trademark symbols on our Trademark FAQs page.
Presumption of Validity
Federal registration on the primary index for trademarks in the U.S. creates the first legal presumption that the mark is authentically registered and entitled to the legal protections that come with such registration.
Presumption of Ownership
A mark registered on the Principal Register also creates the second legal presumption that the registrant on the application owns the mark. In trademark disputes, the need for the mark owner to prove their ownership is eliminated or easily facilitated through the demonstration of the Certificate of Registration as evidence of valid ownership, shifting the burden to the opposing party to challenge the validity of the registration.
Presumption of Exclusive Rights
Principal registration additionally creates the third legal presumption that the registered owner holds exclusive rights and permissions to use the mark nationally in connection with the goods and/or services identified in the registration.
Nationwide Notice to the Public
A successful registration on the Principal Register serves as the trademark owner’s constructive notice of claim of ownership in the United States. This federal recognition of owner’s claim to the mark deters potential competitors from using the mark or something similar that may cause likelihood of confusion, as if it came to litigation matters, the infringing party cannot claim the adoption of the mark or something similar was in good faith due to unawareness of the existing registration.
Incontestability
Once certain statutory requirements are met, a trademark owner has the ability to file a Declaration of Incontestability under Section 15 of the Lanham Act. If accepted, the registration reaches “incontestable” status, meaning it becomes significantly more difficult for opposing parties to challenge the validity of the registration on certain grounds. It is important to note that incontestability does not imply immunity. Simply put, the status strengthens the owner’s position of enforcement by limiting certain challenges to the registration.
Stronger Enforcement Rights
Registered trademarks on the Principal Register hold the upper hand in infringement litigation cases as intellectual property courts recognize the statutory presumptions of ownership, validity, and exclusive rights attached to a registration. Said presumptions simplify litigation by minimizing the amount of evidence required to establish a valid case of trademark infringement.
Customs Enforcement
Principal Register registrations may be submitted to the U.S. Customs and Border Protection (CBP) to be recorded. Once recorded, an additional layer of legal protection is federally provided as CBP plays a crucial role in identifying and seizing imported goods from foreign countries that appear to be counterfeit or otherwise infringe a registered trademark.
Supplemental Register
The Supplemental Register is designated for trademarks and service marks that are functional, but not yet considered “distinct” according to the examining attorney at the USPTO. Therefore, these marks do not yet qualify for registration on the Principal Register.
A common scenario that often plays out occurs when a trademark examiner at the USPTO reviews a trademark registration application and determines that the proposed mark is merely descriptive of the goods and/or services identified in the application. The examiner will then issue a Section 2 (e)(1) refusal. In the office action issued to the applicant, the examiner will elaborate on their decision to issue the “merely descriptive” refusal onto the Principal Register and may suggest an amendment seeking registration onto the Supplemental Register instead while the mark acquires distinctiveness.
In such cases, the applicant then has three options: argue that the mark is not descriptive, claim acquired distinctiveness, or accept the examiner’s proposed amendment to seek registration on the Supplemental Register. More often than not, applicants end up accepting the examiner recommendation as it is the best case for marks that are not inherently distinctive.
Important Note: A trademark registration application with a Section 1(b) filing basis is likely seeking temporary registration onto the Supplemental Register. A Section 1(b) filing basis indicates the intent to use the proposed mark in commerce in connection with the goods and/or services class identified in the trademark registration application.
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The Advantages of Registered Trademark on the Supplemental Register
Although there are more limitations than advantages, registration on the Supplemental Register can still be beneficial. Just like a mark on the Principal Register, the use of the registered symbol “®” is authorized to owners of a registered trademark or service mark, regardless of which register. Also, similarly to a trademark on the Principal Register, registration on the Supplemental Register establishes federal recognition of the mark as it becomes included in USPTO database records, consequently deterring potential infringers, competitors, or later applicants from using the same trademark or adopting something too similar. Supplemental registration can additionally serve as a basis for seeking international protection of a trademark or service mark in certain foreign countries through the Madrid Protocol.
You can find more information on international registered trademarks on our Trademark Registration Services webpage.
The Limitations of Registration on the Supplemental Register
Registered trademarks and service marks on the Supplemental Register have legal protections; however, they are much harder to uphold. Supplemental registration does not include the presumption of validity, ownership, or exclusive rights that is granted with Principal registration. So if pursuing a trademark infringement lawsuit against an alleged infringer, the owner of a registration on the Supplemental Register has to rely on common law trademark rights as a basis for their allegation.
Unlike trademarks or service marks on the Principal Register, marks on the Supplemental Register cannot achieve incontestable status, nor can they be recorded with the U.S. Customs and Border Protection (CBP) for international customs enforcement.
From Supplemental Register to Principal Register
A trademark or service mark that is registered on the Supplemental Register cannot be simply “upgraded” or “converted” to the Principal Register, as there is no direct conversion process. In order for a mark from the Supplemental Register to be registered on the Principal Register, the trademark owner must file an entirely new and separate application for the same mark. This new application should contain the same mark, same applicant information, and same class(es) of goods and/or services, although it will receive a new serial number and will be reviewed by a different examiner at the USPTO.
Successful registration is acquired if the applicant is able to prove to the USPTO examiner that the mark has acquired distinctiveness through commercial use and brand development since the original registration on the Supplemental Register. If the examiner determines the mark is now eligible for registration on the Principal Register, a new registration will be issued. The original registration on the Supplemental Register may be allowed to expire by halting any further maintenance fee payments or may be voluntarily surrendered.
Trademark Registration Assistance Online From a USPTO Registered Patent Attorney
Carson Patents not only assists inventors with the patent application process, but we also assist entrepreneurs with the trademark registration application process. We are able to help register business names, brand names, logos, slogans, or other distinctive sights, smells, or sounds that could be used to identify goods and services. We offer a free trademark consultation to discuss trademarking needs. Consultations help us determine the best steps to take to move forward towards the successful registration of a trademark or service mark. Contact us today to apply to get your marks registered or for help fixing registration applications you started on your own.
