Alternative Trademark Register – Supplemental Register
There are two trademark registers at the U.S. Patent & Trademark Office
(USPTO): the Principal Register and the
Supplemental Register. The Principal Register is the main
trademark register that most trademark applicants desire registration upon.
However, trademarks that are not able to be registered on the Principal
Register, can often times be registered on the Supplemental Register
instead. Examples of trademarks that cannot be registered on the
Principal Register but possibly on the Supplemental Register include (i)
descriptive trademarks that are capable of acquiring distinctiveness, (ii)
surnames, (iii) geographic terms and (iv) non-distinctive, non-functional
Benefits of Registration on Supplemental Register
While not the preferred trademark register, registration on the Supplemental Register does provide the following benefits enjoyed by the Principal Register:
- Protects against third-parties registering confusingly similar trademarks at the USPTO.
- Right to use the official registered trademark symbol “®” as notice of federal registration.
- Right to sue infringers in federal court and have federal law control key issues of validity, ownership, infringement, injunctions and damages.
- Ability to obtain foreign trademark protection in countries with international treaties.
- After five (5) years of usage and/or registration on the
Supplemental Register, the registrant can apply for registration of the
mark on the Principal Register.
Benefits of Registration on Principal Register Not Enjoyed by the Supplemental Register
The following benefits of registeration on the Principal Register are not enjoyed by registration on the Supplemental Register:
- A Principal Registration is prima facie evidence of the registrant’s exclusive right to use the mark nationwide – Supplemental Registrations have no such evidentiary effect.
- A Principal Registration is constructive notice of a claim of ownership to eliminate the good faith defense – Supplemental Registrations have no such effect.
- A Principal Registration has a presumption of validity – Supplemental Registrations do not.
- A Principal Registration carries a presumption that the registrant is the owner of the registered trademark – Supplement Registrations do not.
- A registration on the Principal Register can become incontestable after five (5) years of registration – Supplemental Registrations can never become incontestable.