You have a business and you want to protect your brand with a trademark so no one else can use it. After all, if another company in your industry starts to use the same brand name as you, consumers could be confused. You don’t want them to think a competitor’s inferior products and services come from your company!
That’s great! You understand how important protecting your brand is to building a successful business!
So you file an application for trademark registration and learn that your mark has been approved for the Supplemental Register, not the Principal Register. You think, “Wait a minute! I want to be on the Principal Register. That must be better. Why is my mark on the Supplemental Register?”
First, calm down. Having your mark on the Supplemental Register is not a bad thing. Yes, the Principal Register does provide added benefits, but you still get an amazing bundle of rights when your mark is on the Supplemental Register.
Let’s take a closer look at why your mark ended up on the Supplemental Register and what the real differences are between the Supplemental Register and the Principal Register so you know exactly what’s going on.
Why Your Trademark is on the Supplemental Register
When you register a trademark, you’re given the exclusive right to use that mark in commerce for certain products and services. The purpose of this exclusivity is to ensure there is no confusion among consumers about the source of the products and services they buy. While it might be okay for two companies to have the same or similar names in completely different industries where there is little or no chance for consumer confusion, that’s not the case when two companies operate in the same or similar industries.
That’s also why you should register for a trademark to protect your brand. You don’t want anyone else to use it or a similar name in your industry. However, not every brand can be trademarked. A review of the Spectrum of Trademark Distinctiveness Infographic shows you that a mark must be distinctive in order to be trademarked. That means it cannot be descriptive. The more descriptive a name is, the less chance there is to get it trademarked.
Why? Think of it this way. If someone registered the name Computer Company, then no other business could use the term “computer company” to refer to their business or brand in any way. If another business used that term, they could be accused of trademark infringement. Descriptive words and phrases have to be available for anyone to use or we’d run out of ways to refer to products and services!
Bottom-line, if your mark is descriptive and has not yet been registered as a trademark by anyone else, it will be registered on the Supplemental Register if the U.S. Patent and Trademark Office approves your trademark application.
What is the Supplemental Register?
Think of the Supplemental Register as a holding room for marks that haven’t acquired distinctiveness yet. A mark is considered to be distinctive if it’s unique (e.g., a made up word like Kodak or a known word used in a way that doesn’t coincide with its accepted definition like Apple).
If it’s not unique, it must be distinctive to the business in consumers’ minds. In other words, the owner of the mark has to be able to prove that the mark has a specific, secondary meaning to consumers when they see or hear it that is different from the descriptive, primary meaning for the word or phrase. A well-known example is BEST BUY for a consumer electronics store. The term BEST BUY has a primary meaning of “the best value” or “a great bargain,” but it also has a second meaning in the marketplace as a brand name for a consumer electronics store.
If your mark is neither unique nor distinctive in consumers’ minds, but the U.S. Patent and Trademark Office approves your trademark application, your mark will be registered on the Supplemental Register.
This is a good thing. Rather than just getting a denial on your application, you get many years of federal trademark registration benefits while you grow your brand enabling it to gain distinctiveness. Once the mark has acquired distinctiveness (you can usually prove this through at least five years of continuous use of the mark), you can file paperwork to register your mark to the Principal Register (the register for unique and distinctive marks) where you can get full trademark protection.
Benefits of Being on the Supplemental Register
Yes, being on the Principal Register gives you the most benefits (I’ll get into those later in this article), but the Supplemental Register offers a number of benefits that shouldn’t be undervalued. Supplemental Register benefits include:
1. Protection
When your mark is on the Supplemental Register, it’s protected against confusingly similar marks that others try to register in the future. In other words, if someone tries to register a mark that consumers could confuse with yours, that mark will be denied.
2. Trademark Symbol
A mark on the Supplemental Register is a federally registered trademark. That means you can use the federally registered trademark symbol (the encircled R) to put others on notice of your mark’s federal registration.
In other words, the public will know that your mark is registered and that as a serious business, you value your intellectual property. It also prevents others from claiming innocent infringement if you need to sue someone for infringing on your trademark in the future.
3. Right to Sue
When your mark is on the Supplemental Register, you have the right to sue infringers in federal court and have federal law control the key issues of validity, ownership, infringement, injunctions, and damages.
To win the lawsuit, you’ll need to be able to prove that your mark is distinctive in consumers’ minds in the area where you’re suing them, meaning people in the area recognize your brand, product, or service based on the trademark.
4. International Protection
With a mark on the Supplemental Register, you’ll be able to obtain trademark protection in other countries under certain international treaties. This is very important if your business might expand internationally in the future because it gives you the opportunity to protect your mark in global markets even if you’re not operating in those markets yet.
5. Registration Term
All marks on the Supplemental Register are registered for an initial term of 10 years. This term is renewable for successive 10-year periods as long as you continue to use your mark in commerce. That means your protection can continue if you get your paperwork filed correctly and on time.
Benefits of Being on the Principal Register (3 Big Differences from the Supplemental Register)
The Principal Register provides all five of the benefits listed above for the Supplemental Register plus the following benefits, which are extremely important if you need to enforce your mark:
1. Presumption of Ownership
When your mark is on the Principal Register, you are the presumed owner of that mark in all 50 states. This is a very big deal if you’re involved in an infringement lawsuit because the court will automatically view you as the presumed owner. The onus is on the other party to prove that you’re not the owner.
2. Presumption of Validity
Marks registered on the Principal Register are automatically considered to be valid. In other words, if your mark is on the Principal Register, it is:
- Eligible subject matter (i.e., not descriptive or generic)
- Compliant with all legal requirements
- Operating as a trademark
- Not abandoned
As you can imagine, a presumption of validity is very useful if you’re involved in a lawsuit because it’s up to the opposing part to prove that your mark is not valid.
3. Exclusive Rights
If your mark is on the Principal Register, then it is automatically presumed that you (the Registrant) have the exclusive right to use the trademark nationwide. The opposing party in an infringement lawsuit will need to prove that the exclusive rights granted to you with your trademark registration do not apply.
Both Registers are Good, but the Principal Register is Better
Don’t be disheartened if your mark ends up on the Supplemental Register. It offers very important protection and rights for your brand.
With that said, it’s always best to work with your trademark attorney to come up with a strategy that will give you the greatest amount of protection for your brand now and in the future. That includes filing your application so your mark has the best chance possible of getting on the Principal Register or at least, getting on the Supplemental Register. This is critically important if your mark is descriptive in any way.
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