Principal vs. Supplemental Trademark Register
Author: Karen Y. Kim
Within the United States Patent and Trademark Office, two trademark registers exist – the Principal Register and the Supplemental Register. Most trademark applications seek registration on the Principal Register by default. However, if during the prosecution of the application, the examining attorney determines that a mark is merely descriptive, and therefore ineligible for the Principal Register, amendment to the Supplemental Register might be recommended by the examining attorney, or an applicant may voluntarily amend the application to the Supplemental Register. In some cases, an applicant may argue that the mark has acquired secondary meaning or distinctiveness and is, therefore, still entitled to remain on the Principal Register. For an intent-to-use application, the applicant would need to file an amendment to allege use before amending to the Supplemental Register.
So what are the differences between the two registers? The Principal Register provides certain presumptions and advantages that the Supplemental Register does not. The chart below summarizes the differences between the Principal Register and the Supplemental Register:
| Principal Register | Supplemental Register |
| Presumption of validity | No presumption of validity |
| Presumption of ownership and exclusive right to use the mark in commerce | No presumption of ownership or exclusive right to use the mark |
| Provides constructive notice of the owner’s right to use the mark throughout the entire U.S. | No constructive notice |
| Can become “incontestable” by filing a Section 15 affidavit after 5 years of continuous use | Cannot become incontestable |
| Can be a basis for filing Madrid Protocol applications | Cannot be a basis for filing Madrid Protocol applications |
| Can file applications on an intent-to-use basis | Must be used in commerce to file or amend an application to the Supplemental Register |
| Can be used to prevent the importation of counterfeit goods by recording with the U.S. Customs Services | Cannot be recorded with the U.S. Customs Service |
With all these differences and disadvantages of the Supplemental Register, why would anyone want to amend their application to the Supplemental Register? A registration on the Supplemental Register still provides the trademark owner with certain benefits including:
- the right to sue in federal court for trademark infringement
- the right to use the ® symbol
- blocking third parties from registering confusingly similar trademarks
Further, after the mark has been registered on the Supplemental Register for 5 years, the registrant can reapply for the Principal Register by providing evidence that the mark has been in continuous use and has acquired secondary meaning.
