The United States has two trademark registers: the Supplemental Register and the Principal Register. Everyone wants to be on the Principal Register, but trademarks that are merely descriptive of the goods and services in the trademark application (and don’t have any design element) must go on the Supplemental Register until they have acquired a “trademark meaning” (called secondary meaning by trademark attorneys) in the minds of customers.
What’s the Difference Between the Principal Register and the Supplemental Register for U.S. Trademarks?
The Principal Register provides the best legal protection because, once registered there, a mark is deemed to be “fully protected.” If someone disputes the trademark owner’s rights, the other person must prove that the mark is invalid, for example, because it is descriptive, or functional, or for some other reason permitted by the law. But the USPTO or US Federal Court will assume at the beginning that the trademark is valid, and if the other party can’t prove that your mark is invalid, then it remains valid and you win on that point (which is normally a very important point in a trademark dispute).
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Conversely, if a mark is registered on the Supplemental Register, and there is a lawsuit, the other person (and the court) can assume that your mark is still descriptive, so the burden is on the owner of the mark to prove that it has trademark significance. If the mark was only recently registered on the Supplemental Register, this could be quite difficult.
So why bother with the Supplemental Register?
The Supplemental Register is like a waiting area. A mark registered on the Supplemental Register is waiting for five years until it has acquired secondary meaning as a trademark. In most cases, the USPTO will assume that a mark has acquired secondary meaning after five years of use in the U.S. Secondary meaning can also be shown by the owner investing enough money or having enough sales or market share to convince the USPTO that it has acquired secondary meaning, but this is a difficult thing to do. All descriptive marks must go on the Supplemental Register unless they can show secondary meaning.
The main benefit of the Supplemental Register is that no one else can register a confusingly similar mark on the Principal Register or the Supplemental Register. So registering a mark on the Supplemental Register “holds a place” while your mark acquires distinctiveness. You can start using a descriptive mark in the U.S. without a Supplemental Register registration, but then someone else might register a mark on the Principal Register and you would have to try to oppose or cancel that mark. If your mark is on the Supplemental Register, then the trademark examiner at the USPTO will see your mark and will block any other marks from being registered on either the Supplemental Register or the Principal Register.
A benefit of the Supplemental Register is that there is no Publication for Opposition phase. If the mark is accepted, then it is immediately registered. No one will notice the mark in the publication stage because it is not published before registration on the Supplemental Register. This can help your mark remain unnoticed while you are starting to build market awareness (i.e., secondary meaning). When you apply again after five years to register the mark on the Principal Register, then the mark would be Published for Opposition and others would have a chance to try to block your registration.
A benefit of the Supplemental Register is that it gives you the legal right to use the ® symbol on your trademark, which is only permitted for registered marks (on either the Supplemental Register or Principal Register). This may have the effect of discouraging some people from using a mark that is similar to yours, even during the time when the USPTO still considers it to be a descriptive mark.
A disadvantage of the Supplemental Register is that you must actually be using the mark in commerce before it can become registered. There is no “Intent to Use” status on the Supplemental Register. For this reason, applications filed under the Madrid Protocol via WIPO cannot be converted to the Supplemental Register (those applications do not have a requirement that the mark is actually used in the U.S. before registration is granted).
If you need to sue for trademark infringement, having a mark on the Supplemental Register is not as helpful as the Principal Register because during the lawsuit you must prove that your mark has acquired secondary meaning as a trademark (as noted above). Otherwise, if your mark is still just considered a descriptive mark, then the court won’t protect it, because descriptive words have to be left available for others to use.
What if I register a design mark on the Principal Register when all the words in the mark are disclaimed as descriptive?
The benefit of registering a design mark (logo) on the Principal Register with all the (descriptive) text disclaimed is this: the text is protected to the same degree that it would be protected on the Supplemental Register, but the design is protected fully on the Principal Register. And the entire mark is on the Principal Register, which “looks better.” That is a small thing, perhaps, but it is something. I wouldn’t want to rely on the ignorance of others regarding the meaning of the disclaimer, but that could also occur, so that they might assume your entire mark is protected. Many American business people search the database of the USPTO, but few of them (and not many attorneys, really), understand what is actually protected when they read the details on a trademark registration. As with the Supplemental Register, it would be necessary to file a new application after five years (or sooner if the owner has worked to acquire secondary meaning through advertising campaigns, etc.), so that the words were not disclaimed as descriptive in the new application.