The United States Patent and Trademark Office (“PTO”) is the agency of the U.S. government that registers patents and trademarks. The PTO has two separate registers for trademarks, the Principal Register and the Supplemental Register. Principal registration grants more benefits than supplemental registration, but some marks are not entitled to registration on the Principal Register.
For example, “merely descriptive” marks are ineligible for registration on the Principal Register without proof that consumers associate the mark with the source of the goods on which the mark is used. In trademark law, the ability of a mark to signify source is called “secondary meaning.” A mark that has “secondary meaning” trademark law refers to as “distinctive.” This is because a mark with “secondary meaning” distinguishes the source of the goods on which it is placed. “Merely descriptive” marks are not eligible for registration on the Principal Register because these marks describe the goods on which they are placed, rather than signifying the source of those goods. When Principal Registration is not available, Supplemental Registration may be a possibility. Supplemental registration is generally preferable to no registration at all. This is especially so because the PTO will refuse to register a mark that is confusingly similar to any previously pending or registered mark, including those on the Supplemental Register. Further, because most trademark searches begin at the PTO, registering one’s mark with the PTO will serve to notify anyone who searches the PTO’s records of one’s claim of ownership in its mark.
The different benefits conferred by the Principal and Supplemental Register are:
Principal registration provides the following advantages:
- Registration gives “constructive notice” (which means no one can claim “I did not know,” everyone in the country is deemed to know) of the mark owner’s claim of ownership, so long as the mark owner uses the ® in connection with its goods / services;
- Federal jurisdiction for infringement and related unfair competition claims with no required amount in controversy, and no requirement of diversity of citizenship;
- Profits, triple (3x) damages, attorney’s fees and costs are recoverable;
- It is “prima facie evidence” (which means evidence that is sufficient on its face without the need for additional proof) of the mark’s validity, registration, the registrant’s ownership, and registrant’s exclusive right to use the mark in commerce for the goods / services listed in the registration;
- The mark may become incontestable after five years continuous use; and
- The right to prevent importation of articles bearing an infringing mark.
Supplemental registration provides fewer advantages than principal registration, which include:
- The mark may be cited by PTO against another’s application to register a substantially similar mark, even if the application is for the Principal Register;
- The mark is listed in the PTO’s database, where most U.S. trademark searches commence.
Supplemental Registration does not provide prima facie evidence of the registrant’s exclusive right to the mark, nor does it give constructive notice of the claim of ownership. Further, marks on the Supplemental Register are not entitled to become incontestable.