1. United States Trademark Registrations
Principal Register
vs.
Supplemental Register
This presentation is designed to address the similarities and differences between the Principal Register and the Supplemental Register and the implications of those similarities and differences on the value and protection of trademarks.

2. Not All Registrations Are Created Equal
The Lanham Act recognizes, and authorizes the USPTO to register eligible trademarks on, two separate and very different “registers”:
Trademarks placed on the Principal Register are called Principal Registrations
Trademarks placed on the Supplemental Register are called Supplemental Registrations
The Principal Register and the Supplemental Register separate strong marks from weak marks
The Lanham Act is the common name given to the current United States federal trademark statute. The Lanham Act establishes two different registers of the United States Patent and Trademark Office (USPTO) – Principal and Supplemental. Each register has value, but the value of each is not equal. Generally speaking, the Principal Register is preferred because it provides more protection to the registration. In contrast, the Supplemental Register is generally reserved for weak marks. Weak marks are discussed in more detail below, but, in short, a weak mark is one that some day may be capable of identifying the source of the goods and services with which it is used (and therefore, operating as a trademark), but currently is not in itself distinctive enough to identify source and has not yet achieved the secondary meaning necessary for identifying source. This dichotomy between strong and weak marks is a good way to describe the difference between the Principal and the Supplemental Registers.

3. The Principal Register
Strong marks are registered on the Principal Register and are fully capable of trademark significance at the time of registration.
Three categories of strong marks, in descending order of strength:
Fanciful Marks
“Coined” or invented terms
Arbitrary Marks
Ordinary, everyday terms that are appropriated for products having no relation whatsoever to the term
Suggestive Marks
Hint at, but do not describe, the product for which they are used
A weak mark that becomes strong:
Descriptive mark that has obtained secondary meaning
Marks may be identified as strong through one of two means. The first is that they are inherently distinctive and, therefore, immediately capable of identifying source. Three types of inherently distinctive marks are (1) fanciful marks; (2) arbitrary marks; and (3) suggestive marks.
Fanciful marks are words or combinations of letters that did not previously exist in language. For instance: XEROX and KODAK are fanciful marks.
Arbitrary marks – examples include APPLE for computers and CAMEL for cigarettes – the marks themselves reveal no information about the products with which they are used.
Suggestive marks – examples include SILKY for a shampoo or conditioner or GREYHOUND for bus services. Both marks suggest characteristics or results that may be achieved by use of the goods/services but do not cross the line into describing the goods or services.
The second type of mark that may be identified as strong is an otherwise weak mark – specifically, a descriptive mark – that has become distinctive through the development of secondary meaning so that the mark becomes associated in the mind of the relevant public with a particular source of the goods and services. Secondary meaning can be acquired through consistent and exclusive use over an extended period of time (the benchmark applied is 5 years; however, it is possible to acquire and demonstrate secondary meaning in a shorter period of time through significant advertising and market presence, as evidenced by survey evidence). An example of a weak mark that became strong and therefore capable of being registered on the Principal Register is the mark DOG CHOW for dog food, which was first used by the Ralston Purina Company in 1926.
All of these types of marks are registrable on the Principal Register.

4. The Supplemental Register
Weak marks do not initially have trademark significance. If registrable at all, they are registered on the Supplemental Register.
There are two categories of weak “marks”:
Descriptive Marks
Descriptive of the goods or services for which they are proposed to be used and are registrable on the Supplemental Register
Generic Terms
Consist of words that are the common name for the products or services with which they are being used and are not registrable on the Principal or Supplemental Register under any circumstances
By the statement “if registrable at all” we refer to the fact that some weak marks – namely generic terms – will never overcome their status as unprotectable marks and will not be registrable on either the Principal or the Supplemental Register.
By way of additional explanation of these types of marks:
Descriptive marks – examples include CREAMY for ice cream or CRUNCHY for dry dog food.
Generic Terms – examples include BUNDT for coffee cakes or SODA for soft drinks. Note that there are many well-known generic terms that were once trademarks. This can occur when a trademark becomes so commonly associated with a particular product that it is no longer protectable as a trademark and, instead, becomes a generic term that identifies the product. Some examples of these once famous marks that are now generic include ASPIRIN and ESCALATOR (see presentation entitled “Funeral for a Brand: How Trademarks Become Generic”).

5. Benefits Common to Principal and Supplemental Registrations
Initial term of 10 years, renewable for successive 10-year periods
Double protection against subsequent registration of confusingly similar marks
first by USPTO internal examination
second by opposition/cancellation proceedings after publication
Right to use the official 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 improved trademark protection in other countries under certain international treaties
The following numbers correspond to the numbers on the slide:
Point 1: As long as the mark is used for the goods and services covered by the registration, the registration can be renewed for unlimited 10-year periods.
Point 2: Marks on both the Principal and the Supplemental Registers may be cited against any subsequent application for a confusingly similar mark and registrations on either register can serve as the basis for an opposition or cancellation action.
Point 3: This right to use the ® symbol is extended to registrations on either register and there is no requirement to indicate whether registration is Principal or Supplemental. Not surprisingly, the use of the ® symbol can have a significant deterrent effect on third parties considering adoption of a similar mark and it is very beneficial to not have to identify a weaker mark that is on the Supplemental Register as anything other than a registered mark.
Point 5: The fact of a registration (regardless of whether that registration is on the Principal or Supplemental Register) is enough proof of rights in some countries to be the basis for the assertion of significant rights including infringement actions, oppositions, and cancellation actions. This holds true even in some countries where the mark may not be registered and therefore is reliant solely on the U.S. registration.

6. Benefits Unique to the Principal Register
Constructive notice nationwide of:
The registrant’s claim of ownership of the registered mark
The registrant’s claim of priority of use of the mark; and
The registrant’s claim that the mark is effective from the filing date of the federal application (which can be earlier than the date of registrant’s actual first use in commerce)
Right to expand actual use nationwide where registrant previously used trademark only within a small region, subject to certain defenses
More “robust” registration with stronger trademark rights
Permits recordal with United States Customs Service to block importation of products/materials bearing infringing/counterfeit trademarks
Virtually all registrations of major brands, logos, slogans, and other source identifiers reside on the Principal Register. These marks enjoy the following rights and benefits in addition to those enjoyed by Supplemental Registrations.
With respect to the constructive notice benefits identified on point 1 of this slide, note that U.S. trademark law imposes a duty on persons adopting marks to adopt the marks in good faith. Adoption in good faith has been construed to require a reasonable inquiry to determine whether someone else may have rights to that mark. Registration on the Principal Register provides third parties with notice that the registrant claims ownership and prior use. Someone adopting the mark after the registrant’s application has been filed cannot claim to have not known of the registrant’s claimed exclusive rights. In contrast, while a third party may be able to search and find marks on the Supplemental Register, they do not serve the same constructive notice role because they are not considered marks that are distinctive enough to afford exclusive rights to the owner.
With respect to the expansion right identified on point 2 of this slide, common law trademark rights are limited to the geographic scope of the use made by the owner. A federal registration on the Principal Register allows the owner to claim rights nationwide even if the owner’s use only covers a limited geographic area. The result is that the owner of a registration on the Principal Register who only uses a mark in the East Coast can prevent a party from adopting the same or similar mark after the filing date of the registrant’s application even if that third party is based only on the West Coast.
With respect to point 3 of this slide, this statement is generally true because the registrations on the Principal Register are typically granted after more rigorous review by USPTO examining attorneys, after more scrutiny through publication, and by surviving third-party challenges in the form of concurrent use, interference, and/or opposition proceedings.

7. Benefits Unique to the Principal Register
The registration creates an evidentiary presumption that the trademark is “distinctive” rather than “descriptive”
The registration is prima facie evidence that the:
Trademark is valid (i.e., eligible subject matter, complies with all legal requirements, operates as a trademark, not abandoned)
Registrant is the owner of the registered trademark
Registrant has the exclusive right to use the trademark nationwide
Note: A registration can become conclusive evidence if the registrant makes the registration “incontestable” on or after the fifth anniversary of registration date, subject to certain defenses or defects
As to point 5 of this slide, this presumption converts from “rebuttable” to “conclusive” if the registrant makes a registration “incontestable” on or after the fifth anniversary of the registration date. Please see the notes below regarding the Affidavit required to move a registration to incontestable status.
With respect to point 6 of this slide, a registration becomes incontestable through the filing of a Section 15 Affidavit of Incontestability. This Affidavit asserts that the mark has been used by the registrant for at least 5 consecutive years. Such continuous use renders the mark incontestable, which increases the evidentiary impact of the registration as well as decreasing the options available for challenging the grant of the registration through a cancellation procedure. The Section 15 Affidavit is commonly filed with a Section 8 Affidavit of Use during the required Section 8 maintenance filing that is due between the 5th and 6th anniversary of a registration in order to continue the life of that registration.

8. Why Supplemental Registration?
Allows marks that otherwise would not be federally protected to enjoy some of the benefits of federal trademark registration
Expedites the registration process through the efficiencies of a simpler internal USPTO examination process
Reduces the likelihood of time-consuming Office Actions
Eliminates the requirement that the application be published for opposition and the risk of facing opposition proceedings
So in light of all the benefits associated with the Principal Register, why would you want to consider the Supplemental Register?
The primary reason is that it may provide a registration and some (but not all) associated benefits to a mark that otherwise would not be registrable. This would include descriptive marks that have not yet acquired secondary meaning. Receipt of a Supplemental Registration also can sometimes occur more rapidly because the examination process is often more streamlined, which can result in a lower likelihood of receiving office actions from the examining attorneys at the USPTO. It should go without saying that fewer office actions also translate to a lower cost for prosecution. In addition, Supplemental Registrations are not published for opposition and as a result cannot be challenged through opposition proceedings by third parties. Obviously, the lack of publication also adds to the lower costs as well as the expedited registration process.

9. Beware the Limitations
The benefits unique to marks on the Principal Register are not afforded to Supplemental Registration. Limitations of Supplemental Registration are:
No constructive notice nationwide of the registrant’s claim of ownership of the registered mark
No constructive use (and priority of use) nationwide of the registered mark effective from the filing date of the federal application
No evidentiary presumptions
Despite the benefits that were discussed on the previous slide, ultimately Supplemental Registration is a second-best alternative to a Principal Registration thanks to the following limitations of a Supplemental Registration.
The evidentiary presumptions that are not applicable are discussed above and are as follows:
- presumption of validity (i.e., eligible subject matter, complies with all legal requirements, operates as a trademark, not abandoned), ownership, exclusive use nationwide and distinctiveness (as opposed to descriptiveness).

10. Beware the Limitations
No certainty of ability to expand actual use nationwide when registrant previously used trademark only within a small region
No recordal with United States Customs Service permitted
No availability of “incontestability” status
Weaker registration process
Regarding point 5, you will recall from previous slides that recordal with Customs is designed to help block importation of products/materials bearing infringing/counterfeit trademarks and such recordal is not available with Supplemental Register marks.
Regarding point 6, Section 15 Affidavits of Incontestability are not available for filing against Supplemental Registrations. Accordingly, even where the standards of a Section 15 filing regarding continuous use for at least 5 consecutive years have been met, the filing cannot be made against a Supplemental Registration.
Regarding point 7, the registration process is weaker and therefore the mark is not truly tested because the USPTO examination process is less rigorous – the mark is not published and consequently not tested by third parties through concurrent use, interference, and/or opposition proceedings.

11. Movement between Principal and Supplemental Registers
Supplemental to Principal –
Required if a Supplemental Register application is clearly eligible for the Principal Register
Not permitted once a Supplemental Registration has been obtained even if mark becomes eligible for Principal Register
Principal to Supplemental –
Permitted BEFORE the Principal Register application becomes abandoned or has its rejection affirmed on appeal, PROVIDED that use of the mark in commerce has commenced as of the time of the amendment
This slide addresses the permitted and restricted movements of applications and registrations between the Principal and the Supplemental Registers.
In terms of movement from the Supplemental to the Principal Register, there are two rules. First, if an application for registration on the Supplemental Register is clearly eligible for registration on the Principal Register then the examining attorney with the USPTO will require amendment of that application to the Principal Register. Second, if a Supplemental Registration has been issued, the owner of the mark cannot subsequently convert that registration into a Principal Registration. This is the case even where the mark has achieved secondary meaning and becomes eligible for registration on the Principal Register. In such instances, the mark owner must file a new Principal Register application arguing that the mark has acquired distinctiveness.
In terms of movement from the Principal to the Supplemental Register, if an application has been refused registration on the Principal Register and the grounds for such refusal are such that it would be registrable on the Supplemental Register then the applicant may amend the application to request registration on the Supplemental Register. Such an amendment may be accomplished only if the applied-for mark is in use in commerce. Accordingly, where an application for the Principal Register is an intent-to-use application, the applicant would have to amend the application to allege use and then request further amendment to the Supplemental Register. Such a change can occur any time before the Principal Register application becomes abandoned or has its rejection affirmed on appeal.

12. The Bottom Line
Supplemental Registration is a second-best alternative to Principal Registration BUT may be the only and therefore best alternative for some marks