A Brief Look at Trademarks & The Principal vs. Supplemental Register

By Justin M. Jacobson, Esq.

One constant question posed by clients and a frequent option offered in an Office Action Letter from the U.S. Patent and Trademark Office (U.S.P.T.O.) is the potential of registering a mark on the “Supplemental Register.”  This is often misunderstood and is an important consideration for many individuals and companies as they create and expand their brand.  This in because, in the United States, a trademark or service mark may be registered with the U.S.P.T.O. on either the Principal Register or the Supplemental Register.  While this distinction may not be initially apparent, the difference between which register a mark is on is of great importance.  This is because there are several legal implications depending on which Register a mark is registered on.

Generally, an applicant will prepare and file a trademark or service mark application for registration on the Principal Register.  This is because a mark registered on the Principal Register is stronger than a mark listed on the Supplemental Register.  For instance, a Principal Registered mark receives the presumption of the validity of the mark.  This requires a party, who is attempting to cancel or otherwise invalidate an existing registered mark to provide sufficient evidence to overcome and rebut this presumption.  The existing Principal Register registration may also be used as prima facie evidence of valid ownership of the mark and as an acknowledgment of the mark’s continuous as well as exclusive use in commerce for a particular good or service.  Furthermore, after five years of continuous, uninterrupted use from the date of registration, there is the possibility that the mark may achieve “incontestable” status.  This status is beneficial to the mark owner as it limits the grounds that a third-party may use to cancel the registration.  In particular, it enables an owner to bring an infringement lawsuit without having to prove that customers in a particular area actually know of and are familiar with the owner’s product or service and that the consumers would associate the owner’s trademark with providing that product or service.

Nevertheless, certain marks may be refused registration on the Principal Register; but, instead may be permitted registration on the Supplemental Register.  For example, a mark that is described as inherently “descriptive” may potentially receive protection on the Supplemental Register.  This is because a “descriptive” mark has the potential to identify the source of the goods or services associated with the applicant through “acquired distinctiveness.”  This means that as the owner utilizes the mark in commerce for an extended period of time, the mark could potentially acquire distinctive characteristics so that the consuming public identifies the registered mark with specific goods or services provided with the mark.

However, it is important to note that a mark on the Supplemental Register is not provided with the same legal authority as one on the Principal Register.  For instance, a mark on the Supplemental Register cannot be recorded with United States Border and Customs Services in an attempt to prevent the importation of counterfeit products.  There is also no opportunity to become incontestable, which is beneficial for an infringement lawsuit as well as further strengthens the rights an owner has in the mark.

There are some benefits for a mark’s registration on the Supplemental Register.  One such benefit is that the owner is entitled to use the registration symbol (“(R)”) with the mark.  The mark is also protected against registration of a confusingly similar mark and permits the owner to bring an infringement suit in federal court.   Furthermore, the Supplemental Register registration may serve as the basis for a filing in a foreign country under the Paris Convention.

It is important to note that registration on the Supplemental Register is not available for an “intent-to-use” application.  That is because an applicant must be actually utilizing the mark in commerce for the potential option of registration of the mark on the Supplemental Register.  Thus, an owner should begin to use their mark in commerce if it is suspected that it is descriptive or otherwise may be barred from registration on the Principal Register.  In instances where an “intent-to-use” application is filed, the registered mark may only be placed on the Supplemental Register instead of the Principal Register after the applicant utilizes the mark in commerce and files the appropriate allegation or Statement of Use.  After the Statement of Use is filed with the U.S.P.T.O., the application’s filing date will then be considered the date that the Statement of Use was filed as opposed to the original application filing date.  This could cause potential issues for the application owner if another third-party applies for the same or similar mark during the time between the application’s original filing and the subsequent Statement of Use filing.

Additionally, once an Applicant obtains a Supplemental Registration, it is possible to obtain a registration on the Principal Register for the same mark in the future based on the mark’s acquired distinctiveness due to continued use in commerce for a substantial period of time.  However, to obtain that, the applicant must file a new application for the same mark for the Principal Register.  This new application would refer back to the existing Supplemental Register registration.

Overall, there are some substantive differences between a mark’s placement on the Principal Register and on the Supplemental Register.  Ultimately, it is beneficial for an individual or business owner to be aware of these factors when selecting a brand name as well as understanding their options when applying for protection in a particular mark.  This distinction could be the difference between rights in a mark or not.

This article is not intended as legal advice, as an attorney and/or another professional specializing in the field should be consulted.

© 2018 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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