The United States Patent and Trademark Office (USPTO) maintains two trademark Registers: the Principal Register and the Supplemental Register. As the chart below shows, these Registers share some important commonalties but also have key differences.
|Principal Register||Supplemental Register|
|Provides the right to use the ® registered trademark symbol in conjunction with the trademark||Yes||Yes|
|Serves as a basis for filing a trademark infringement lawsuit in federal court||Yes||Yes|
|Prevents the registration of confusingly similar marks with the USPTO||Yes||Yes|
|Provides a presumption of validity for the registered trademark||Yes||No|
|Provides a presumption of ownership of the registered trademark||Yes||No|
|Is prima facie evidence of the nationwide, exclusive right to use the registered mark||Yes||No|
|Can become “incontestable” after 5 years||Yes||No|
Because of the advantages and presumptions of the Principal Register, the Principal Register is typically stronger for trademark owners. The Principal Register is also typically more desirable for trademark owners considering the additional time and cost associated with litigating a trademark infringement claim with a Supplemental Register registration.
Registering on the Principal Register or Supplemental Register
The Principal Register is reserved for trademarks that are distinctive while the Supplemental Register is for non-distinctive trademarks. Whether a trademark is distinctive depends on the trademark’s category.
Protectable trademarks fall into one of four categories: arbitrary, fanciful, suggestive, or descriptive. Words or phrases that are generic cannot serve as trademarks and are thus not protectable.
- A fanciful mark is invented solely for use as a trademark. The words have no meaning in common language because the only meaning is in relation to a product.
- An arbitrary mark uses a common word to describe a product in an unfamiliar way.
- A suggestive mark requires some measure of imagination to reach a conclusion regarding the nature of the product.
- A descriptive mark conveys an immediate idea of the ingredients, qualities, or characteristics of the goods.
- A generic term is used by the general public to identify a category of goods. Therefore, a generic term cannot function as a trademark. An example of a generic “mark” would be COMPUTER for a business that sells computers.
Trademarks that are arbitrary, fanciful, or suggestive are considered inherently distinctive. Thus, these trademarks are eligible for registration on the Principal Register.
What about descriptive trademarks? These trademarks could end up on either the Principal Register or the Supplemental Register. A descriptive trademark may be registrable on the Principal Register under U.S.C. § 1052(f) (hereafter, §2(f)). Under §2(f), a descriptive mark is registerable on the Principal Register if it has been used exclusively and continuously for at least five years and has acquired distinctiveness (i.e., “secondary meaning”). A mark has secondary meaning when it is so associated in the public mind with certain goods that the mark serves to identify and distinguish these goods from other goods. If a descriptive mark lacks the §2(f) requirements of five years of exclusive and continuous use and acquired distinctiveness, that mark will likely be delegated to the Supplemental Register.
Registering a trademark on either the Principal Register or the Supplemental Register provides valuable protection to trademark owners. However, the Principal Register’s additional benefits makes it the more desirable option. To be eligible for the Principal Register, a trademark must be arbitrary, fanciful, suggestive, or descriptive with proof of distinctiveness and five years of exclusive and continue use.