Trademark Registration: Principal or Supplemental?
When it comes to trademarks, there are two different registers you need to know about: the Principal and Supplemental Register. What are the differences between the two?
The difference is distinctiveness in the minds of consumers.
Importance of trademarks
First, let’s talk about what you should care about in trademarks. Trademarks serve as a source identifier for goods and services. They protect consumers from buying goods and services from confusingly similar sources, purchasing knock offs, or being misled about a service provider. Registration preserves the integrity of the relationship between the supplier and the product and makes it easier for consumers to recognize and trust the goods and services provided. By doing so, trademarks ensure that the producer of services and goods will reap the financial benefits of what they sow and not have their hard-earned profits undermined by competitors who may disguise themselves as the producer of the trademarked products.
Trademarks can last forever, unlike patents, or copyright rights. The Lanham Act of 1946 sees to it that once the mark is on the Principal Register it is protected for 10 years starting from the day of first application and can be renewed indefinitely, so long as the product or service is still in use and the requisite fees are paid. The USPTO classifies marks as weak or strong based on a sliding scale where general and descriptive marks are weak and marks that are fanciful, arbitrary, and suggestive are strong. This is also known as the “Spectrum of Distinctiveness.”
Where your mark falls on this scale is the deciding factor on eligibility in the Principal or the Supplemental Register.
What is the Principal Register?
The Principal Register is granted to marks which are distinctive and offers a better public claim on the mark. This is the primary trademark register and the place you want your registration to be held. When up against an infringement allegation, a mark on the Principal Register does not have to prove ownership, validity, or exclusive use because the registration of your trademark in the Principal Register is prima facie evidence of validity, ownership, and your exclusive use as it is attached to the assigned products. This shifts the burden of proof to the defendant if you were to claim infringement.
What is the Supplemental Register?
The Supplemental Register is for a mark that does not meet the distinctiveness standard of the Principal Register and is therefore not provided full protection. A mark on the Supplemental Register must prove ownership, validity, distinctiveness, and demonstrate the use of the mark in commerce based on common law trademark rights in the area. This means the burden of proof is on the one alleging the infringement. Your mark being on the Supplemental Register offers a better claim than not having registered, but burden of proof of ownership is on you and long-term use of the mark alone is not enough to prove distinctiveness.
How are they Similar?
Both registers have some similar features:
Both registers allow use of ® next to your trademark.
Both registers prevent other similar trademarks from being registered to prevent consumer confusion.
Both registers help protect your claim of infringement in foreign countries via the Madrid Protocol.
Both Registers list your trademark in their database for public notice.
Both Registers may be used to support a claim in an infringement suit.
How are they Different?
The Principal Register provides far more protection. On top of those benefits provided by both registers, the Principal Register also provides stronger rights against infringement, an incontestability option, and intent-to-use applications in the following ways:
Legal presumption that you own and have exclusive rights to your mark across the nation connected directly to the goods or services it represents.
A mark on the Supplemental Register does not provide this proof.
A five-year-old mark on the Principal Register can only be challenged under limited circumstances and can receive Section 15 declaration of incontestability.
No such thing on the Supplemental Register; the mark can never achieve incontestability.
If you haven’t used your mark yet you can file an intent-to-use application which will protect the mark starting the day that you first filed.
Not eligible for Intent-To-Use applications on the Supplemental Register.
The Supplemental Register does offer some advantages over doing nothing with your trademark and if you aim for the Principal Register, but fall short of the mark, then the Supplemental Register is a good resting spot until you try again. Marks that are found to be descriptive are often given the chance of registration on the Supplemental Register. Here they can stay and in five years, the owner may apply for registration on the Principal Register based on acquired distinctiveness.