Tuesday, May 2, 2017

Trademark - Principal versus Supplemental Register

     At the U.S. Patent & Trademark Office, there are two federal trademark registers - the Principal Register and the Supplemental Register.

     The primary difference between the registers is the type of trademark eligible for each register. Marks that are distinctive (i.e., fanciful, arbitrary or suggestive) or marks that have acquired distinctiveness are eligible for the Principal Register (see our Trademark Primer post on trademark strength). Marks that are non-distinctive but capable of acquiring distinctiveness are eligible for the Secondary Register.

     When registering a federal trademark, most people want their trademark to be on the Principal Register because of its procedural and substantive benefits and not the Supplemental Register. However, being on the Supplemental Register, is better than not being registrable (see below for two reasons).

Application process

     There are differences concerning the application process.

1. Applications for the Principal Register can be both in-use and intent-to-use applications. However, applications for the Supplemental Register can only be in-use applications.

2. Applications for the Principal Register are published for 30-days allowing third-parties to initiate opposition proceedings. However, marks for the Supplemental Register are not published. 

Benefits of a registered mark

     The following table summaries the additional benefits a trademark receives for being on the Principal Register compared to the Supplemental Register.

     The following table identifies the benefits that are identical regardless of which register a mark is upon.

Why the Supplemental Register

      First, registration on the Supplemental Register blocks other confusingly similar marks that are later filed from registration on either the Principal or Supplemental Registers. Second, registering the mark starts a clock on your mark acquiring distinctiveness. As mentioned earlier, a descriptive mark that has acquired distinctiveness can be registered on the Principal Register. When arguing that a mark has acquired distinctiveness, the USPTO requires, at a minimum, that a mark be used for at least five years and may require additional proof.

- Henry Park

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