When applying for a federal trademark, many business owners are surprised to learn that there is more than one trademark register. The United States Patent and Trademark Office (USPTO) maintains both the Principal Register and the Supplemental Register, and the difference between them can affect the strength and enforceability of your rights.
At Jafari Law Group, we help clients understand how these registers work and how to position their trademarks for long-term protection. Choosing the right path at the application stage can save time, money, and frustration.
What Is the Principal Register?
The Principal Register is the primary trademark register and provides the strongest level of federal trademark protection. Trademarks on the Principal Register are considered distinctive, either inherently or through acquired distinctiveness.
Common examples include:
- Made-up or coined terms
- Arbitrary marks used in unrelated industries
- Suggestive marks that require imagination to understand
Registration on the Principal Register provides important legal benefits, including:
- A legal presumption of ownership and validity
- Nationwide priority dating back to the application filing date
- The right to use the ® symbol
- The ability to block later-filed confusingly similar marks
- Stronger enforcement options in federal court
For most businesses, this is the preferred outcome.
What Is the Supplemental Register?
The Supplemental Register is designed for marks that are capable of becoming distinctive but are not yet eligible for the Principal Register. These are often descriptive marks that describe a feature, quality, or characteristic of the goods or services.
Examples include:
- Terms describing ingredients, functions, or purpose
- Geographic terms used descriptively
- Common phrases not yet associated with a single source
While the Supplemental Register offers fewer benefits, it still provides some advantages:
- The mark appears in USPTO records
- Use of the ® symbol is allowed
- The registration can deter others from adopting similar marks
- The registration can be cited in later proceedings
It does not provide presumptions of validity or exclusive nationwide rights.
Key Differences That Matter
The most important distinction is legal strength. A Principal Register registration provides enforceable rights and strong presumptions in your favor. A Supplemental Register registration does not establish distinctiveness and offers limited enforcement power.
Another difference is eligibility. Only marks that are distinctive or have acquired distinctiveness qualify for the Principal Register. Marks that are merely descriptive and lack secondary meaning may only qualify for the Supplemental Register.
A Supplemental Register registration can sometimes serve as a stepping stone. After sufficient use and consumer recognition, a mark may later qualify for the Principal Register through a new application.
Why the USPTO May Offer the Supplemental Register
If the USPTO determines that a mark is descriptive, the examining attorney may refuse registration on the Principal Register and suggest amending the application to the Supplemental Register. This can allow the application to proceed rather than being abandoned.
Whether to accept this option depends on business goals, branding strategy, and long-term plans.
Choosing the Right Strategy
Deciding between the Principal and Supplemental Registers is not always straightforward. Consider factors such as:
- How distinctive your mark is
- How long you have used the mark
- Whether consumers associate the mark with your business
- Your enforcement and expansion plans
In some cases, revising the mark or arguing for distinctiveness may be a better option than accepting the Supplemental Register.
When to Get Legal Guidance
Register selection can affect the value of your trademark and your ability to enforce it. Making the wrong choice can limit your rights or require refiling later.
At Jafari Law Group, we help clients assess trademark strength, respond to USPTO refusals, and develop registration strategies aligned with their business goals. We offer a free consultation to discuss your trademark application and next steps.
Contact Jafari Law Group today to speak with an attorney about the Principal and Supplemental Registers.