Trademarks are an essential part of protecting a brand and can be registered on either the supplemental or principal trademark registers. There are key differences between the two, including the level of legal protection provided and the use of the registered trademark symbol.

The Principal Trademark Register – ®

The principal trademark register is the primary register for trademarks in the United States. Trademarks on the principal register have the highest level of legal protection and are presumed to be valid. Owners of these trademarks have exclusive rights to use them nationwide and can sue for trademark infringement in federal court. Principal register owners are eligible for certain legal remedies such as damages and injunctive relief.

To register a trademark on the principal register, the mark must be distinctive, capable of identifying and distinguishing the goods or services of one seller from those of another. Distinctiveness can be achieved through continuous and exclusive use of the mark, as well as through extensive advertising and promotion.

When a trademark is registered on the principal register, the owner can use the ® symbol next to the trademark, indicating that it is a registered trademark with the USPTO (United States Patent and Trademark Office).

The Supplemental Trademark Register – ™

The supplemental trademark register is a secondary register for trademarks that are not initially eligible for registration on the principal register. Supplemental register trademarks do not have the same level of legal protection as those on the principal register. However, registering a trademark on the supplemental register can offer some benefits.

To register a trademark on the supplemental register, the mark must be capable of distinguishing the goods or services of one seller from those of another but may not be distinctive enough to meet the requirements for the principal register. Trademarks on the supplemental register are not presumed to be valid and may not be used as a basis for trademark infringement lawsuits in federal court. However, the registration on the supplemental register does provide constructive notice of the registrant’s claim to the mark, which can be helpful in resolving disputes.

When a trademark is registered on the supplemental register, the owner can use the ™ symbol next to the trademark, indicating that the owner claims a right to the mark, but it is not yet registered with the USPTO. In fact, any word or logo a business owner considers to be source-indicating can use the ™ symbol to indicate such, regardless of whether an application for registration has even been filed.

Additionally, the supplemental register can be a valuable tool for trademark owners who have not yet achieved the level of distinctiveness required for registration on the principal register. Marks that are not distinctive might describe a quality or characteristic of the goods or services, and therefore are not distinguishable as a source of the goods and/or services. Additionally, marks which are “predominantly merely a surname” (e.g., Smith) may face similar accusations of descriptiveness under specific sections of the Lanham Act. The good news is, once a mark has been on the supplemental register for five years, the registrant may apply for registration on the principal register, provided that the mark has acquired the necessary distinctiveness through exclusive use and promotion. If, however, it can be shown that other users have begun or continued using the descriptive mark, whether to describe the goods/services, or to indicate a source, principal registration may still not be possible. In those cases, it is often helpful to hire an attorney to write a letter demanding the other users of the mark refrain so exclusivity may be maintained and/or achieved.

Advantages and Disadvantages of Each Register

The advantages of registering a trademark on the principal register are clear. Owners of trademarks on the principal register enjoy the highest level of legal protection and exclusive nationwide rights to use their marks. This protection is especially valuable in cases where trademark infringement is likely, and the owner must rely on the legal system to enforce their rights.

Using the ® symbol next to a trademark on the principal register can be an important marketing tool. It signals to consumers that the trademark is a registered trademark, adding credibility and legitimacy to the brand.

On the other hand, registering a trademark on the supplemental register can be useful in cases where a trademark is not yet distinctive enough for the principal register. While the level of protection is not as high as it is for the principal register, registration on the supplemental register can provide some level of protection, and it can be a stepping stone to achieving registration on the principal register in the future.

Using the ™ symbol next to a trademark on the supplemental register can still offer some legal protection, indicating that the owner claims a right to the mark.

Ultimately, the decision of which register to use depends on the individual needs and circumstances of each trademark owner. Often, descriptiveness of a mark will prevent a trademark owner from registering their mark on the principal register, at least initially, and they may have no choice in the matter. In those cases, it is often best to proceed with registration and amend to the supplemental register, and re-apply once sufficient time has passed and the mark has become distinctive and exclusive to the owner.

Whether to pursue registration on the principal or supplemental may have other considerations related to your specific situation. If you have questions or if you’d like our help, please call Grell & Watson Patent Attorneys for a free consultation.