Principal Register vs. Supplemental Register
What is the Principal Register?
The Principal Register is the intended destination for most trademark applications. It is where registrants have the most rights and benefits. A trademark must be distinct or have secondary meaning to be registered on the Principal Register.
Benefits of the Principal Register include:
Constructive use and constructive notice, meaning any other business/person looking to use your mark should have known of the existence of the mark if a thorough search was completed;
Incontestability after five years, meaning others cannot try to cancel your mark;
Ability to sue in federal court regardless of diversity or amount in controversy;
Ability to sue in federal court and receive injunctive relief, money damages, triple damages, and defendant's profits.
If an attorney from the USPTO deems your mark is merely descriptive (too descriptive) and ineligible for registration on the Principal Register, the Supplemental Register could be the next best option, if the mark has already been used properly.
Businesses will use merely descriptive names due to the benefits that are afforded to them initially, however, the USPTO will make it much harder to own those words in connection with products/services it describes. For example, if you have an ice cream shop called Chilly Creamy, it’s beneficial because your customers know what to expect. Exclusively owning those words would be an uphill battle so a USPTO examiner will likely advise you initially are only eligible for the Supplemental Register.
So, what is the Supplemental Register?
The Supplemental Register is a secondary trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become an indicator of source. Marks registered on the Supplemental Register, like those registered on the Principal Register, are protected against conflicting marks in later-filed USPTO applications. However, Supplemental Register registrations do not receive the same legal advantages and presumptions of Principal Register registrations.
Source: 15 U.S.C. §1094; 37 C.F.R. §§2.47, 2.75(a); and TMEP §§801.02(b), 816.
Benefits of the Supplemental Register include:
Ability to sue in federal court and receive injunctive relief, money damages, triple damages, and defendant's profits
Ability to use the coveted circle R symbol ®;
Your registration may serve as the basis for filing the mark in a foreign country;
The registration will serve as an obstacle to confusingly similar marks.
If your trademark application was denied for being too descriptive, please contact me here and we can discuss your options.