There are two different trademark registers at the USPTO, offering differing levels of trademark protection
When people talk about trademark registrations at the United States Patent and Trademark Office (USPTO), they are usually talking about registered trademarks on the principal register. However, there is a second trademark register at the USPTO for other trademark registrations, known as the supplemental register. The principal register is where trademark owners want their trademarks registered on because they will have more trademark rights. Why are there two registers? What are the differences?
The fundamental differences between the Principal and Supplemental Trademark Registers
Why are some trademarks refused registration on the principal register?
The principal register is reserved for distinctive trademarks. A trademark is distinctive if it is fanciful, arbitrary or suggestive. A fanciful trademark is a made up word such as KODAK. An arbitrary trademark is one that uses a known word as a trademark for unrelated goods or services, such as APPLE for computers. Lastly, a suggestive trademark is a trademark that suggests something about the goods or services, such as GREYHOUND for buses, suggesting that the buses are fast and reliable.
The supplemental register is for trademark applications that Examining Attorneys decide are descriptive. An example of a descriptive trademark currently registered on the supplemental register is TURF OUTLET, which was registered for “On-line wholesale store services featuring artificial turf and artificial turf accessories.” Because TURF OUTLET describes what they do, i.e. selling artificial turf, the Examining Attorney did not allow the trademark to register on the principal register. The closer the trademark is to describing the goods or services it is used in connection with, the more likely it will land on the supplemental register.
TURF OUTLET trademark as seen in the Trademark Electronic Search System
Different levels of trademark protection for registered trademarks on the principal or supplemental register
During the examination process, if the Examining Attorney concludes a trademark is distinctive, he or she will approve it for the principal register. The principal register is more desirable because trademarks on the principal register receive more protections and benefits than trademarks on the supplemental register, including the presumption that the trademark is distinctive. When the Trademark Trial and Appeal Board, a court, or an Examining Attorney is conducting a likelihood of confusion analysis, the more distinctive the trademark is, the more likely they will find it is being infringed. A descriptive trademark, such as TURF OUTLET , will not receive such broad protection. So TURF OUTLET, from our example above, may not win a trademark infringement case against a similar store that uses the trademark TURF SHOP, even though the trademarks are extremely similar.
In addition, trademarks on the principal register are presumed to be valid and enforceable in the whole country. Whereas, trademarks on the supplemental register there is no presumption of federal ownership. This again becomes problematic in trademark infringement cases. For example, TURF OUTLET would need to prove that they are well known nationally if they wanted to sue for trademark infringement against a store that is located in a different state. Offering evidence of being well known is hard and can be costly, so it is a great benefit if that is already presumed.
However, there are still benefits of being on the supplemental register. For example, trademarks registered on the supplemental register can still use the ®, which lets competitors know you have a trademark and also can reassure consumers that the product or services offered are legitimate. In addition, the USPTO will not let anyone register the same trademark or something very similar to it. Lastly, anyone looking to start a company may come across a trademark registration on the supplemental register and know not to use that name or something similar. In other words, a trademark on the supplemental register acts as a deterrent to anyone thinking of adopting a similar trademark.
Do you have any questions about the two trademark registers? Feel free to leave a comment or contact us.