Federal Trademark Registers: Principal Register v. Supplemental Register

Alyssa M. Bruno, Esq.

There are two separate federal trademark “registers” that exist within the United States Patent and Trademark Office (USPTO): 1) the Principal Register; and 2) the Supplemental Register.  The Principal Register is the primary register of trademarks maintained by the USPTO and confers full trademark protection in all 50 states to mark holders.  Importantly, only strong, distinctive marks (i.e. suggestive, arbitrary, and fanciful marks) are registrable on the Principal Register.  To learn more about what constitutes a “strong” mark, click here.  However, even if your mark isn’t strong enough to qualify for protection on the Principal Register, it still may qualify for protection on the Supplemental Register, which provides less benefits and protection than the Principal Register but is still worthwhile for many trademark holders to pursue.

Principal Register

The Principal Register affords FULL TRADEMARK PROTECTION to the marks that are registered on it, including the following rights and presumptions:

  1. Presumption of ownership and exclusive use of mark in all 50 states.
  2. Presumption of validity of mark in infringement actions. 
  3. Retroactive federal protection starting on the date the application was filed. 
  4. Protection against third parties successfully registering identical or confusingly similar marks.
  5. Ability to use the ® sign in commerce.
  6. Right to sue for infringement in federal court.
  7. Ability to recoup attorneys’ fees, statutory damages, and treble (3x) damages in trademark infringement lawsuits.
  8. International protection, including (1) the ability to prevent importation of infringing goods by filing the registration with the U.S. Customs and Border Protection; and (2) the ability to use the registration as a basis to obtain trademark protection in foreign countries.
  9. Notably, after five years of continuous use in commerce, a mark registered on the Principal Register becomes incontestable upon application, meaning that the registration cannot be attacked on certain grounds, such as prior use or descriptiveness.

Supplemental Register

 As discussed above, only strong, distinctive marks qualify to be registered on the Principal Register.  Nevertheless, certain weaker marks, such as descriptive marks that describe an associated product or service (e.g. BALANCE NUTRITION for nutritional products) may qualify for registration on the Supplemental Register if the mark is already being used in commerce by the applicant and no other party has previously registered a “confusingly similar” mark.  Certain surnames and geographic marks may also be registrable on the Supplemental Register.

The marks registered on the Supplemental Register are afforded partial trademark rights, including the following:

  1. Protection against third parties successfully registering identical or confusingly similar marks.
  2. Ability to use the ® sign in commerce.
  3. Right to sue for infringement in federal court.  However, to win, the mark holder must show that its mark has acquired distinctiveness in the given marketplace.
  4. International protection in the form of the ability to use the registration as a basis to obtain trademark protection in foreign countries.
  5. Mark may become registrable on the Principal Register after five years of continuous use.

IMPORTANT: One of the main advantages of having a descriptive mark registered on the Supplemental Register is that after five or more years of continuous use, the mark holder can apply to register it on the Principal Register on the basis that the mark has gained acquired distinctiveness in the marketplace.

Bottom Line

The bottom line is that if you have yet to choose a brand name for your product or service, it’s best to choose a strong mark that qualifies for trademark protection on the Principal Register.  Nevertheless, all hope is not lost if you choose a weaker mark because even if your mark does not qualify for full trademark protection on the Principal Register, it still may qualify for partial trademark protection on the Supplemental Register.

If you are in need of tailored guidance surrounding the strength of your company’s marks and the trademark registration process in general, contact the trademark attorneys at Bruno Law by calling us at 610-258-4003 or filling out the Contact form.