Principal vs. Supplemental Trademark Register

What Is the Difference Between the Principal Register and the Supplemental Register?

A main difference between the Principal Register and the Supplemental Register is strong, distinct trademarks go on the former and weak, non-distinct trademarks go on the latter.

You might be thinking that weak trademarks can’t be registered with the United States Patent and Trademark Office (USPTO). This is generally true. However, the Supplemental Register is a bit like a lifeboat for otherwise non-distinct trademarks.

If an examining attorney at the USPTO believes a trademark does not function as a brand-identifying mark, it is weak. But if they believe the mark has the capacity to become distinct with enough time in the market, they might declare it worthy of the Supplemental Register. Let’s go over what distinctiveness looks like for trademarks.

Distinct vs. Non-Distinct Trademarks

At its core, distinctiveness in trademarks is determined by how well the average consumer can tell that your product/service belongs to your brand based on the mark. For example, the average American does not need any additional context clues when asked, “Want to go to McDonalds?” and can pinpoint that the fast food franchise is connected to the slogan, “I’m Lovin’ It.”

There are five different categories of trademark distinctiveness:

• Fanciful—made up words that have no meaning outside of the goods/services
• Arbitrary—real words that are unconnected to the goods/services
• Suggestive—words that nod toward the goods/services but don’t actually describe them
• Descriptive—words that clearly portray an element of the goods/services
• Generic—words that literally describe the goods/services

Inherently distinct marks are typically categorized as fanciful, arbitrary, or suggestive. They qualify for the Principal Register. Non-distinct marks are generally descriptive, and qualify for the Supplemental Register. (They can graduate to the Principal Register if they become distinct through use.) Generic marks are not enforceable as trademarks through any means, on any register.

Principal vs. Supplemental vs. Unregistered

Whether you get your mark on the Principal/Supplemental Register or do not apply for federal registration at all, it’s important to have a clear understanding of your trademark’s rights.

A trademark does not need to be registered to gain common law trademark rights. Once a mark is used in commerce through its connection to goods/services being sold to consumers, it has inherent protections. To boost those protections, a mark can be registered at the federal level, where it’s placed on either the Principal or Supplemental Register. (Trademarks can be registered at the state level, too.)

When we think of a registered trademark‘s rights, we are probably thinking about the Principal Register. This offers the most robust federal protections, including the assumption that your mark is valid and you own it, which can go a long way in curbing trademark infringement.

Below, we detail what rights to expect with these different federal registration and unregistered options.

*The USPTO’s Trademark Search is the first step for many would-be trademarkers to check their own potential mark against registered marks in the system.

Sign up for Northwest’s Trademark Service to start the federal registration process.

How Do I Get on the Supplemental Register?

While many trademark applicants are aiming for the Principal Register, if you have a trademark that is not inherently distinct, you may be interested in the Supplemental Register. There are two ways to get there:

• Apply specifically for the Supplemental Register on your original USPTO trademark application
• File an amendment after your original application for the Principal Register has already been submitted or rejected

Let’s go over what these different paths to the Supplemental Register look like.

1. Apply for the Supplemental Register Initially

Applying for federal trademark registration on the Supplemental Register is essentially the same as applying for the Principal Register. The exception is you need to note in the application that you’re applying for Supplemental Register approval.

The application costs are the same for either register ($250 per class for TEAS Plus and $350 per class for TEAS Standard) and so are the maintenance fees.

One thing to note is you cannot file with an intent-to-use filing basis for the Supplemental Register. To apply for that register, your mark needs to currently be used in commerce.

2. File an Amendment

If your trademark application gets rejected by the USPTO, and you had originally been considered for the Principal Register, you can file an amendment to be reconsidered for the Supplemental Register. This can be done by yourself or a trademark attorney, if you’re working with one.

Even if you have been given a final refusal office action by the USPTO, you can still amend your application and try for the Supplemental Register. Of course, this typically only works if you have been rejected on grounds of having a non-inherently distinctive mark.

Importantly, you cannot file for an amendment if you have already appealed the final refusal. If the Trademark Trial and Appeal Board affirm the original refusal, an amendment to the application is not allowed. In the eyes of the USPTO, an amendment to the register and an appeal to the board serve as equal last ditch efforts.

What happens after I’m approved for the Supplemental Register?

If your mark is approved for the Supplemental Register, your federal trademark rights kick in, giving you increased protections from the common law or state rights you already had. The USPTO record will say that your mark is “Allowed for Supplemental Registration.”

After it’s registered, the mark will be published in the USPTO’s Gazette to let the public know of its existence. Comparatively, marks on the Principal Register are published prior to registration, providing others with the opportunity to oppose its registration.

How Do I Move to the Principal Register?

If your mark has gained brand-identifying distinctiveness since the last time you applied, you can file a new application for the Principal Register, even if your mark is already on the Supplemental Register.

There’s a common misconception that a trademark has to be on the Supplemental Register for five years before it can retry for the Principal Register. In actuality, there’s no firm rule about how long you have to wait, as long as you can prove your mark has acquired a distinct secondary meaning in the market. Re-filing five years after the mark’s first use in commerce date qualifies as evidence of distinctiveness. Filing prior to the 5-year mark requires additional evidence, which can be hard to obtain.

Keep in mind, you don’t want to let your Supplemental Register registration lapse just because you’re applying for the Principal Register. While it might feel like a waste of time to keep up with the register you’re hoping to leave, the Principal approval process can be lengthy. Plus, if you’re refused for any reason, you’ll still want to have protections as you decide your next steps.

GET TRADEMARK SERVICE