A Matter of Principal: Clarifying Principal v. Supplemental Registers
Alex Sandler | July 20, 2020
Why Register a Trademark?
Trademarks help businesses build their brands and provide a way for consumers to identify them. One way to protect a trademark is to register it with the United States Patent and Trademark Office (USPTO), which means the trademark gets added to the Federal Trademark Register. Although unregistered trademarks have some value (i.e., the right to exclude others using the owner’s mark where the owner conducts business), registered trademarks receive several benefits that unregistered trademarks do not enjoy. Perhaps the most important benefit is that federal registration entitles an owner to exclusive rights in a mark nationwide.
So, although registration is not required, most trademark owners are better off registering. The Federal Trademark Register consists of two separate registers: the Principal Register and the Supplemental Register. The Principal Register is the primary trademark register maintained by the USPTO and is where most trademark applicants prefer to register. This is because the Principal Register affords the highest protection for trademark owners. Some trademarks that are not accepted on the Principal Register may still qualify for trademark protection on the Supplemental Register. We’ll discuss how to get on the Principal Register, why some trademarks are refused registration on the Principal Register, and some of the benefits both registers offer.
How Can Marks Qualify for the Principal Register?
As trademark attorneys know, in order to register a mark on the Principal Register, it must be distinct. A distinct mark is capable of distinguishing one mark’s goods and services from those of another mark. The USPTO categorizes distinct marks into three separate categories: fanciful, arbitrary, and suggestive.
Fanciful and arbitrary marks are considered highly distinct marks. Fanciful marks consist of made-up words, like “XEROX,” that are used for the sole purpose of functioning as a trademark. Arbitrary marks consist of common words that have been used in an unrelated industry, like “BLACKBERRY” for phones. Suggestive marks use words or phrases that hint at the nature of goods or services without clearly describing them or using the common or preferred terms. They require consumers to use their imaginations to understand what the product does. For example, “AIRBUS” is suggestive of an airplane. Why? The mark is not the ordinary way to describe an airplane. While it doesn’t require a lot of imagination to figure out what an airbus might be referring to, that’s not the common term. Suggestive marks are considered less distinct, but they still may register on the Principal Register.
Descriptive, or non-distinct, marks are not eligible for registration on the Principal Register and can only register on the Supplemental Register. Descriptive marks use words that describe a product or service. When consumers are confronted with a descriptive mark, they often recognize it as describing a product feature, not as identifying a business. For example, “BED AND BREAKFAST REGISTRY” is descriptive for lodging reservation services because it describes its purpose. There’s nothing distinct about the mark that would help consumers distinguish the company’s registry service from that of others. Marks that consist primarily of surnames and geographically descriptive terms are also considered descriptive and are placed on the Supplemental Register.
Non-distinct marks can register on the Principal Register upon showing “acquired distinctiveness.” If a mark has acquired distinctiveness, this means that it has gained enough recognition that consumers associate the mark with a good or service. Generally, five years of continuous use of a mark is enough to show that a mark has acquired distinctiveness. For example: “BEST BUY” was once considered descriptive and could not register on the Principal Register until the USPTO was convinced that the mark had acquired distinctiveness.
Benefits of Registering on the Principal Register
There are a few significant advantages of registering on the Principal Register. First, marks on the Principal Register have nationwide priority over others. This means that your client can sue infringers who are using the mark anywhere in the United States. Also, registration provides all trademark owners with a legal presumption that their mark is valid and that they exclusively own the mark nationwide. In the event of a lawsuit, the court will automatically view your client as the exclusive owner of a valid trademark. No further proof of validity or ownership is required. The burden will then shift to the defendant to challenge this, which is difficult, especially if the mark is highly distinct. A trademark owner is in a pretty good position upon registering a mark with the Principal Register.
In addition, by filing a Section 15 declaration after five years on the Principal Register, a mark can obtain “incontestable” status. Incontestability gives trademark owners even higher credibility in court, as registration is conclusive evidence that they exclusively own a valid trademark in the US. This means that your client’s mark will be presumed valid unless a party can prove the following:
The mark consists of functional matter
Your client obtained trademark registration by fraud
The mark is abandoned
The mark is used to misrepresent the source of goods or services
The mark violates US antitrust laws
The mark is generic
Although there are some limitations, obtaining incontestability can deter others from filing a lawsuit against your client. This is especially true for marks that could be argued to be descriptive, because no one can challenge a trademark owner’s registration on the grounds that it is descriptive once it has obtained incontestable status.
While both principal and supplemental trademarks can use ® with a mark, trademarks listed on the principal registry are afforded more rights than those on the supplemental registry. For example, principal registration grants owners the right to obtain statutory damages in cases involving a counterfeit mark and the right to register a mark with U.S. Customs to prevent the importation of goods that contain infringing marks. Take a look at the Trademark Manual Examining Procedure (TMEP) guide under §801.02 for more information regarding the Principal Register.
Benefits of Registering on the Supplemental Register
If your client’s mark cannot register on the Principal Register, registration with the Supplemental Register is still a good option. The Supplemental Register provides trademark owners with federal protection and benefits until they can prove that their mark has acquired distinctiveness and can register on the Principal Register. One advantage is the right to file for trademark infringement in federal court. In addition, by registering on the Supplemental Register, a trademark owner can also use ® with a mark. Using the registration symbol will make it easier for consumers to identify your client, and consumers will perceive your client as a trusted source. Moreover, a trademark owner can prevent a subsequent owner from registering a confusingly similar mark on either register. This may reserve your client’s spot on the Principal Register until the mark has acquired distinctiveness.
The disadvantage of filing for registration on the Supplemental Register is that there is no legal presumption of validity and ownership because a mark is presumed to be non-distinct on the Supplemental Register. In the event of a lawsuit, it will be necessary to prove that your client exclusively owns a valid trademark. This requires demonstrating to the court that consumers associate your client’s mark with a business in the area where the infringing mark is used. The court will consider how long your client has used the mark, how many sales your client has made, how much was spent advertising, and whether the defendant intentionally infringed on the mark, among other factors. Overall, this can result in a very timely and costly litigation process.
With that said, registering a mark on either the Principal or Supplemental Register provides trademark owners with a lot of protection. Even if your client’s mark cannot register on the Principal Register, you should advise your client to consider registering on the Supplemental Register. Registration on the Supplemental Register will deter others from choosing a mark that is similar and will show competitors that your client has invested in a trademark and is ready to defend it. Once the mark has acquired distinctiveness, your client can file for registration on the Principal Register and enjoy the additional protections that come with principal registration.