The U.S. Patent and Trademark Office (USPTO) offers two separate trademark registers – the Principal Register and the Supplemental Register. The Supplemental Register has gained attention in recent years because trademark owners can only use the Amazon Brand Registry if their business’s brand is on the Principal Register, not if it is on the Supplemental. Because failure to be recognized as a brand on Amazon can have a negative impact on enforcement against infringers, many trademark owners are asking “What’s the difference between the Supplemental and Principal Registers?
What’s the difference between the Supplemental Register and Principal Register?
The Principal Register is the registry most think of when registering a trademark with the USPTO. The Supplemental Register is a place for trademarks that may be capable of acquiring distinctiveness but contain descriptive terms, geographic terms, surnames and/or non-distinctive, non-functional trade dress. For example, a well-known trademark that started on the Supplemental Register is “BEST BUY.” The phrase BEST BUY has a meaning as a good purchase, but also has developed a secondary meaning in the marketplace as a brand name for a consumer electronics store.
If a trademark ends of up on the Supplemental Register, it will still be afforded some of the same federal trademark registration benefits as a trademark on the Principal Register while the trademark continues to be used, allowing it to gain distinctiveness. The Supplemental Register registration provides the following advantages to the registrant:
- Use of the registration symbol ® with the registered trademark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar trademarks.
- Inclusion of the registered trademark in the USPTO’s database of registered and pending trademarks, which will make it easier for third parties to find it in trademark search reports, provide public notice of the registration, and thus potentially deter third parties from using confusingly similar trademarks.
- Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar trademarks in applications filed by third parties.
- Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
- Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
After five years of registration of the Supplemental Register, an applicant may file a new application for registration on the Principal Register. The applicant may submit evidence of exclusive use of the trademark (if applicable) and argue in favor of Principal Register registration. There is no guarantee that USPTO will accept that registration change.
Although having a trademark registered on the Supplemental Register is not ideal, it is still preferable to having no federal trademark registration. The best course of action is that whenever possible, trademark owners should seek to develop and use a distinctive trademark that can be registered on the Principal Register.