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3 Biggest Differences Between the Principal Register and Supplemental Register for Trademarks

January 20, 2019 By Kelley Keller

3 Biggest Differences Between the Principal Register and Supplemental Register for Trademarks

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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About Kelley Keller

Kelley Keller, Esq. is an intellectual property (IP) attorney, speaker, and educator with two decades of experience in the IP field. She works with individuals and businesses in a wide variety of industries helping them transform their ideas, knowledge, and innovation into valuable business assets that drive profits. Kelley offers education to established businesses, startups, entrepreneurs, corporate executives, non-profits, government agencies, legal professionals, and students about starting and growing a business as well as about IP, social media law, and the importance of protecting valuable brand assets and creative work.

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Kelley works differently. After an initial phone conversation (I live in CA and she's in PA), she drafted a scope of work for both efforts and set a flat fee which included (and still includes) the back and forth conversations a client needs in order to get the best results. She is extremely knowledgeable and truly able to "hear" what I'm after and create meaningful legal documents and advice that have helped me immeasurably. I highly recommend Kelley Keller.
2016-04-23T10:27:42-05:00
Kelley works differently. After an initial phone conversation (I live in CA and she's in PA), she drafted a scope of work for both efforts and set a flat fee which included (and still includes) the back and forth conversations a client needs in order to get the best results. She is extremely knowledgeable and truly able to "hear" what I'm after and create meaningful legal documents and advice that have helped me immeasurably. I highly recommend Kelley Keller.
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Kelley explained my costs and options, as well as the pros and cons of each. She also kept me informed about my matter, letting me know what I needed to do at the appropriate time. All in all, I felt very involved in the process without being overwhelmed. Kelley made a wildly stressful situation so much better. I would highly recommend her services.
2016-04-23T10:42:43-05:00
Kelley was able to explain complicated legal issues in a manner that was easy to understand without being patronizing. She was also great at talking me down from ledges - it was easy to get worked up when opposing parties weren't being cooperative but Kelley advised me to trust in the process and she was right. Kelley explained my costs and options, as well as the pros and cons of each. She also kept me informed about my matter, letting me know what I needed to do at the appropriate time. All in all, I felt very involved in the process without being overwhelmed. Kelley made a wildly stressful situation so much better. I would highly recommend her services.
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2016-04-23T10:46:03-05:00
Words cannot express how much I appreciate Kelley Keller. She has helped me and my business on so many levels. Whenever I have a question I always know that I can call her and she will give me the best advice/counsel. I know that my business is in good hands with Kelley. Kelley, THANK YOU for EVERYTHING!!!
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Kelley Clements Keller, Esq has been a huge support to the launch of our new umbrella organization, Suits to Careers, Inc. and the branding and trademarking of our men's program, Tied to Success. We could not have navigated this transition without her support. Many thanks.
2016-04-23T10:49:27-05:00
Kelley Clements Keller, Esq has been a huge support to the launch of our new umbrella organization, Suits to Careers, Inc. and the branding and trademarking of our men's program, Tied to Success. We could not have navigated this transition without her support. Many thanks.
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2016-04-23T10:53:29-05:00
Kelley is an exceptional IP attorney. She understands the legal nuances facing start-ups and is willing to work within those restrictions. Kelley is casual and easy to work with, but when it comes to legal action she is aggressive and takes charge. She has successfully helped us secure coexistence agreements and trademarks for our business. Here expertise has added exponential value to the technology we have built and I would highly recommend her to anyone seeking IP representation.
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2016-04-23T10:54:48-05:00
Kelley is not only extremely knowledgeable in the realm of intellectual property, but she made the whole process fun! It's not often you hear fun and legal work in the same sentence but Kelley's personality eased my worries while keeping me upbeat the whole time. She explained the entire process in language I could understand and kept me updated continuously. I would not hesitate to work with her again or refer her to my friends and family.
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