You should register your trademark on the Supplemental Register when your mark is descriptive instead of suggestive, arbitrary, or fanciful. For example, a trademark for “Good Fish Store” would be descriptive, while “Burger King” is suggestive of the greater chain of restaurants.
If your mark is merely descriptive of your goods or service you cannot have it placed on the Principal Register. This is because it has not acquired the required level of distinctiveness. You may, however, register such a mark on the supplemental register.
Generally, you should always favor registering a mark on the Principal Register because it will make your life easier. When you register a mark on the Principal Register, it gains certain protections that marks on the Supplemental Register do not receive.
Getting on the Principal Register
You can get your mark on the Principal Register by selecting the corresponding option when filing a trademark application with the United States Patent and Trademark Office (USPTO).
For a mark to be registered on the Principal Register it must either be “inherently distinctive” or have acquired a certain distinctiveness over time. You can only place descriptive marks on the Principle Register after they acquire this distinctiveness. However, if they do not meet this requirement they can instead register for the Supplemental Register.
Under certain circumstances, a mark that has remained on the Supplemental Register for five years is presumed to have acquired secondary meaning. If your mark has done this, then you can apply to have your mark listed on the Principal Register.
Why do you want to be on the Principal Register?
Federal registration on the Principal Register offers a number of advantages for the trademark owner. These include:
Prima Facie Evidence
Prima facie is simply legal jargon that means “already established,” i.e. you don’t have the burden of proving it.
Registration on the principal register provides prima facie evidence that your mark is:
- Owned by you
- Registered exclusively to you (for goods and services specified in your registration)
This can save you a lot of time and hassle in court. Absent this prima facie presumption, you would have the burden of proving all of the above.
Constructive Notice of the Claim of Ownership
As soon as your mark is on the Principal Register, the world is deemed to be on “constructive notice” that you claim ownership of this particular mark. This means that the average person should have known about the mark, even if they claim they had no knowledge of it. Essentially, this means ignorance is not an excuse for infringement.
Further, this means they also have a time limit to contest your mark, or they risk losing the mark to you.
One of the most significant protections that comes from the Principal Register is that you can keep foreign companies from shipping in infringing or counterfeit goods. With registration on the Principal Register, you can have U.S. Customs and Border Protection intercept violating goods at the border.
Suit for Infringement
Once your mark is federally registered, you can also bring suit in federal court for infringement of your mark and unfair competition.
Your position on the Principal Register also makes applying applying for a trademark in foreign countries easier. This could save you a lot of time and headache, not to mention attorney fees, in trying to navigate the complex red tape of foreign jurisdictions.
Right to use the “Registered” (®) Symbol
With federal registration, you are able to use the registered symbol (®). This lets the world know that your mark is receiving federal recognition as a protected trademark.
If your mark remains on the Principal Register for five years, you can apply to have your mark deemed incontestable. This is the highest level of protection your mark can receive. In most cases, you should apply for this distinction as soon as possible.
In order to have your mark declared incontestable, you must show that:
- There have been no final legal decisions issued against the mark.
- There are no pending challenges to your use of the mark.
- You have timely filed a Declaration of Incontestability of a Mark Under Section 15.
- The mark is not and has not become generic.
Once the USPTO approves your incontestability application, you will have the highest trademark protections available. Under these protection, a court will not allow a suit to be brought forth against the mark holder unless on certain specific grounds.
For example, these grounds include, but are not limited to, suits that state the mark:
- Was obtained by fraud.
- Has been abandoned.
- Is used to misrepresent the source of its goods or services.
- Has become generic.
- Is contrary to the U.S. Code sections in title 15 chapter 22 § 1052(a)-(c) or § 1054.
In any other event, you may raise as a defense that your mark is incontestable and the court will rule in your favor.
Moreover, if you sue someone for infringement and they raise any defense not listed above, then the court will rule in your favor because your mark is incontestable.
Provisions for Damages
In certain circumstances, you will be entitled to several remedies should you suffer damages from an infringing mark. These include, but are not limited to:
- The profits the infringing party made using your mark.
- The damages you suffered due to the infringement.
- The cost of bringing the action to court (e.g. attorney fees, court costs, etc.).
If the infringing party knowingly uses a counterfeit of your mark, then they may owe you triple damages.
How does the Supplemental Register Differ?
If your mark is not inherently distinctive you will instead want to list it on the Supplemental Register. Examples of these types of marks include marks that are:
- Composed of surnames (“Kat’s Fry Shack”)
- Geographic locations
- Considered non-descriptive “Trade Dress”
However, these protections are not as powerful or as beneficial as those given to Principal Register marks. Instead, the Supplemental Register provides more limited protections including:
- Using the ® symbol.
- Gaining the right to bring a trademark infringement suit in federal court.
- Citing your registration against a later filed application to register a confusingly similar mark.
If you aren’t sure whether your mark is distinctive enough for the Principal Register, you may want to speak with an experienced trademark attorney. This could save you a lot of time and effort.
In most cases, even if your application would be denied, the USPTO examining attorney will give you an opportunity after rejecting your application to amend your application.
Basically, the USPTO will tell you that they cannot list your mark on the Principal Register at this time. You you can then amend your original application and ask the USPTO to list your mark on the Supplemental Register instead.
Amending your Register Type
Amending your place on the Supplemental Register to one on the Principal Register is simple. the USPTO provides instructions for doing this on their website. Basically, if your mark is on the Supplemental Register for five years without a dispute they consider your mark distinctive.
You can then take this presumption and file a new application to have your mark listed on the Principal Register. If the USPTO approves your application, your mark will gain all of the protections that come with registration on the Principal Register.
You should only use the Supplemental Register for your trademark when it fails to meet the requirements for the Principal Register. The Principal Register offers broader protections, and is more likely to keep your trademark safe.
If your mark is clearly a descriptive mark that has not acquired a secondary meaning however, you may want to register it on the Supplemental Register. This way you still gain limited protections and start the clock running for potential Principal Register eligibility.
If you are unsure how to classify your mark’s distinctiveness, you may want to speak with a trademark attorney for guidance.