When seeking to register a trademark, many people do not realize that the U.S. Patent and Trademark Office actually maintains two separate trademark registers: the Principal Register and the Supplemental Register. As discussed in a blog post here, a recent decision by the Trademark Trial and Appeal Board points out both the similarities and the many differences between registration on the Principal Register and registration on the Supplemental Register.
See Otter Products LLC v. BaseOneLabs LLC, Opposition No. 91200510 (December 18, 2012) [precedential].
The basic difference is that the Principal Register is reserved for trademarks that are distinctive, meaning trademarks that are capable of identifying the source of origin of the goods or services. Some trademarks are inherently distinctive because they do not immediately convey any information about the nature of the goods or services. For example, EXXON for gasoline or APPLE for computers. In other cases, a trademark that started out as merely descriptive of the goods or services may have acquired distinctiveness due to extensive, exclusive use (typically five years’ continuous and exclusive use is sufficient). For example, AMERICAN for air transportation services provided by a U.S. carrier.
Those trademarks that are not inherently distinctive and have not yet acquired distinctiveness are ineligible for registration on the Principal Register. Provided that the trademark is not a generic term for the goods or services, and it is capable of acquiring distinctiveness through use such that it can serve this source identifying function, such a trademark may be eligible for registration on the Supplemental Register.
Registration of a trademark on the Supplemental Register has many of the same advantages as registration on the Principal Register. For example, a registrant of a Supplemental Register registration is entitled to use the same ® symbol as a registrant of a Principal Register registration. Both types of registrations will show up on a search of the U.S. Patent and Trademark Office’s records, thus potentially deterring others from adopting and using a similar trademark. Either a Principal Register registration or a Supplemental Register registration is sufficient to establish the registrant’s priority over subsequent users of similar or identical trademarks. Either type of registration is sufficient to prove registrant’s standing to initiate an opposition (or cancellation) proceeding against a third party’s trademark application (or registration). When examining a new application, the Examining Attorney may cite either type of registration against the applied-for trademark. In other words, a registration on the Supplemental Register can be used by the U.S. Patent and Trademark Office to bar registration of a similar trademark on the ground of a likelihood of confusion.
In stark contrast, as the Otter Products, LLC v. BaseOneLabs, LLC case shows, that same Supplemental Register registration is
not sufficient by itself to establish a right to relief in an opposition proceeding. This is because only a Principal Register registration is presumptive evidence of ownership of the trademark, validity of the trademark, validity of the registration, and the exclusive right to use the trademark.
See Lanham Act §7(b), 15 U.S.C. §1057(b). A trademark registered on the Supplemental Register, on the other hand, is presumed to be merely descriptive, at least at the time of registration.
See Otter Products at 7.
There are other important differences between the Supplemental Register and the Principal Register. For example, one may not file an intent-to-use application for registration on the Supplemental Register. Only trademarks seeking registration on the Principal Register will be published for opposition. In addition, after a trademark has been registered on the Principal Register for five years, it can achieve incontestable status, meaning that the grounds on which a third party may seek to cancel the registration are significantly limited.
An experienced trademark attorney, who understands both the similarities and the differences between the Supplemental Register and the Principal Register, can help trademark owners maximize the opportunities to protect and enforce their trademarks.
