Principal Trademark Registration vs. Supplemental Trademark Registration
Thursday, November 8, 2018
Prosecuting a trademark at the United States Patent & Trademark Office (USPTO) is one of the most strict administrative proceedings in the world. The USPTO is very active in examining applications and is constantly policing the trademark registers. Yes, that says registers, as in plural. There is actually more than one register available to those wishing to register their trademarks.
The USPTO makes available two different registries where an applicant can register their trademark. So, which one should you register on? In short, shoot for the Principal Register, and if you can’t land it, then settle for the Supplemental.
The Principal Register is the primary register of trademarks registered with the USPTO. The Principal Register enjoys significant advantages. The main advantages are: (1) nationwide constructive use and constructive notice. Constructive notice cuts off the rights of others to use the same (or similar) trademark; and (2) A chance at incontestable status. After 5 years, a mark can achieve incontestable status. This status strengthens the trademark and eliminates a number of defenses that otherwise exist in those first 5 years for infringers.
On the other hand, the Supplemental Register confers no substantive trademark rights. The Supplemental Register does not provide constructive notice, and does not provide a path to incontestability. Additionally, a mark on the Supplemental Register cannot be the basis for preventing importation of infringing goods. So why opt for the Supplemental Register?
To understand how the Supplemental Register can be a useful tool for a brand owner, it is best to understand where the Supplemental Register came from. The Supplemental Register was born in 1946 via the Lanham Act. The real purpose was to provide applicants in the United States a vehicle to register trademarks in foreign countries. Under the Paris Convention, foreign trademark registration could not be granted without domestic registration. So, the Supplemental Register allowed for easy domestic registrations so applicants could then register their marks in foreign countries. There are countries where trademark registration is granted to marks that would not qualify for Principal Registration. Thus, the Supplemental Register was created.
To be eligible for the Supplemental Register, a mark only needs to distinguish a good or service. For this reason, the Supplemental Register is much easier to obtain registration. Obviously generic marks will still be rejected, but so long as your mark distinguishes some good or service, Supplemental Registration should be achieved. With this ease, comes substantially fewer rights.
As set forth above, the Supplemental Register gives the owner no substantive trademark rights; and does not provide constructive notice. The Supplement Register does not make your mark incontestable, and it cannot be used as a basis for the Treasury Department to prevent importation of infringing goods. Supplemental Registration is weaker than Principal Registration, but it still grants one important right to an owner. The Supplemental Register provides the owner with a path to Federal Court. This means an owner may be able to litigate based on Supplemental Registration. In turn, Supplemental Registration provides an opportunity to stop an infringer, because the Supplemental Register provides notice the mark is in use.
So, even if it appears impossible to get your mark on the Principal Register, a mark on the Supplemental Register may provide all the protection you need to stop others from stealing your intellectual assets. If you are struggling to get your trademark registered, you have received a rejection of your trademark, or you haven’t filed a trademark at all, consult an intellectual property attorney to discuss these registration options.