In our recent blog post, we discussed important characteristics of marks to be considered during the selection process. The selection of a distinctive mark is key to being able to successfully enforce rights in a brand name, and also has implications for registration.
In the U.S., unlike most other countries, there are two Trademark Registries: the Principal and the Supplemental. The Principal Register is the primary trademark register maintained by the United States Patent and Trademark Office and is reserved for marks that are inherently distinctive, either fanciful, arbitrary, or suggestive, or for merely descriptive marks that have acquired distinctiveness through extensive continuous and exclusive use in the marketplace.
If an applied-for mark is considered merely descriptive by the USPTO and use in commerce has commenced, an applicant has the option to register on the Supplemental Register. However, registration on the Supplemental Register is an admission that the mark is weak, and, thus, not entitled to a strong scope of protection.
Having a mark registered on the Principal Register confers certain benefits, including:
- Use of the ® symbol
- Ability to bring a trademark infringement suit in federal court
- Nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks. Meaning, all others are presumed to know about the ownership claim once the mark is registered.
- Prima facie evidence of the validity of the mark. While not all marks are created equal, registration indicates that a mark has at least a presumption of distinctiveness and exclusivity.
- Nationwide priority as of the date of application, rather than the registration date.
- Registrant’s exclusive right to use the mark in connection with the goods/services specified in the registration.
- Right to request that U.S. Customs bar the importation of counterfeit goods
- Potential to recover treble damages, attorneys’ fees, and other remedies
- Potential to have a mark acknowledged as incontestable, after continuous, exclusive use of a mark for five years after registration, establishing exclusive rights nationwide and that the mark is inherently distinctive or has secondary meaning.
But, as discussed above, the Principal Register is only available to marks that are inherently distinctive (i.e., are fanciful, arbitrary, or suggestive). For marks that are not merely descriptive and not inherently distinctive, the USPTO still allows for registration, but on the “Supplemental Register.”
Marks registered on the Supplemental Register differ from those on the Principal Register. The most significant difference is that marks on the Supplemental Register do not have all the key benefits under the Principal Register discussed above. That said, a registration on the Supplemental register does entitle the owner to:
- Use the ® symbol
- Bring a trademark infringement suit in federal court
Additionally, and significantly, marks on the Supplemental Register may be cited by the USPTO against a later-filed application for a confusingly similar mark. Moreover, after five years, a Supplemental Registration can be leveraged as evidence of secondary meaning in a new application filed on the Principal Register.
Understanding the benefits of registration on the Principal versus the Supplemental register is important to understanding the rights you will have regarding enforcement. As mentioned above, all marks are not created equal, and, the corollary to this maxim is that all registrations are not created equal. Thus, when selecting a mark, if being able to enforce exclusive rights in your brand name is your objective (and we believe it should be one of your objectives), rather than merely being able to use a mark with a limited risk of being challenged, choosing a mark that is exclusive and inherently distinctive, and not merely descriptive, should be a priority during the selection process.