When navigating the intricate process of a trademark application, understanding the distinctions between the U.S. Patent and Trademark Office’s (USPTO) Principal Register and Supplemental Register can be important if your mark is deemed descriptive, geographically descriptive, or merely a surname. Both registries offer trademark protection, but applicants become concerned when they no longer qualify for the Principal Registry. The short answer is that, while the Principal Registry is preferred, all is not lost. Let’s demystify these terms and provide clarity on their differences.
1. Principal Register: The Gold Standard
The Principal Register is the primary register of the USPTO and is where most trademark owners aim to have their marks registered.
- Stronger Protection: A mark on the Principal Register is presumed to be valid, meaning it’s recognized as distinct and unique.
- Notice to the Public: Once a mark is on the Principal Register, it’s generally easier to argue that other businesses should have been aware of it, making it a potent defense in infringement cases.
- Incontestability: After five continuous years on the Principal Register, a mark can become “incontestable,” providing robust protection against legal challenges.
- Infringement Policing: Principal Registrations are on file with the U.S. Border Patrol, which polices imports for knockoffs and other infringing products.
Eligibility: Only trademarks that are distinct (meaning not generic or descriptive, and not in conflict with another registration) or have acquired secondary meaning (a way of elevating a normally descriptive mark to become more distinct) are eligible for the Principal Register.
2. Supplemental Register: A Helpful Alternative
The Supplemental Register is somewhat like a “junior” registry and is primarily for trademarks that don’t qualify for the Principal Register, typically because they are deemed descriptive and lack secondary meaning.
- Federal Recognition: Although it doesn’t offer as robust protection as the Principal Register, the USPTO still recognizes supplemental registrations as valid, and will reject subsequent applications of the same name.
- Potential Upgrade: Marks on the Supplemental Register can later be moved to the Principal Register if they acquire distinctiveness or secondary meaning over time, and are eligible for reapplication after five years of registration.
- Use of ® Symbol: All registered marks – both Principal and Supplemental – can use the registered trademark symbol (®) with their mark, indicating some level of federal protection.
Eligibility: Trademarks that are currently not distinctive but might become so in the future can be placed on the Supplemental Register. This includes marks that are descriptive or geographically descriptive, as well as surnames.
Principal vs. Supplemental: The Key Takeaways
- Protection Level: The Principal Register offers stronger protection and more legal advantages than the Supplemental Register, but both are better than no protection at all.
- Eligibility: If a mark isn’t currently distinctive enough for the Principal Register, it can often be placed on the Supplemental Register as a placeholder until it gains the required distinctiveness.
- Strategy: Depending on your business goals and the nature of your trademark, registering on the Supplemental might be a strategic move before transitioning to the Principal Register in the future.
Understanding which registry you qualify for and how to achieve the highest level of protection available to you are the main goals of the trademark application process.
If you have further questions about trademark registration or any related matter, don’t hesitate to reach out to our expert team at Daniel Ross & Associates.
All the best,