Principal Register vs. Supplemental Register
By default, most trademark applications seek registration on the Principal Register. When an examining attorney determines that a mark is merely descriptive and ineligible for registration on the Principal Register, the Supplemental Register might be a viable option if the mark has already been used in commerce in connection with the identified goods or services.
For an Intent-To-Use application, you will need to file an acceptable amendment to allege use before changing to the Supplemental option.
What are the benefits of a trademark registration on the Supplemental Register?
A registration on the Supplemental Register would still provide the trademark owner with certain benefits including:
- rights to sue in federal court;
- right to use the circle R symbol;
- the registration may serve as the basis for filing the mark in a foreign country;
- blocking the registration of confusingly similar marks.
Supplemental Register applications are not published for opposition. That means that third parties will not be able to block your application from registering, although they can seek to cancel the registration afterwards.
An owner of a Supplemental Register trademark may seek to re-apply for the Principal Register at a later time. For example, if the mark is used continually for five or more years, it may be worthwhile to apply for the Principal Register then.
Principal Register vs. Supplemental Register Differences Chart
The Supplemental Register would not provide certain legal presumptions afforded to marks on the Principal Register. Also, the right to record the registration with U.S. Customs applies only to goods registered on the Principal Register. Here’s a handy chart summarizing differences between the Principal Register and Supplemental Register:
|Principal Register||Supplemental Register|
|The Registrant may sue in federal court regardless of diversity.||X||X|
|The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.||X||X|
|The registrant may use the circle R registration symbol: ®.||X||X|
|The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d).||X||X|
|Registration is constructive notice that the owner of the mark has the right to use the mark throughout the entire U.S., even if the mark is not being used in a specific geographical area. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072. This means that the owner can prevent a person or entity from using the same mark or a confusingly similar mark anywhere in the U.S. unless the other mark was used before the date of first use of the registered mark.||X|
|Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has the exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b).||X|
|Registration is prima facie evidence that the mark has been used continuously in commerce since the filing date of the application. Rolley, Inc. v. Younghusband, 204 F.2d 209, 211 (9th Cir. 1953).||X|
|After five years of continuous use in commerce, the mark becomes incontestable, meaning that the registration of the mark cannot be attacked on certain grounds, such as prior use or descriptiveness. 15 U.S.C. §1065.||X|
|In a successful trademark infringement action, the registrant may obtain increased statutory damages. 15 U.S.C. § 1117 and 18 U.S.C. § 2320.||X|
|The registrant may use the power of the U.S. Customs Service to prevent the importation of goods that contain infringing marks. 15 U.S.C. § 1124.||X|
Can an ITU application be registered on the Supplemental Register?
If the filing basis of an application is based on an Intent-To-Use, an amendment to allege use (AAU) must first be filed before the application can be changed from the Principal Register to the Supplemental Register. Keep in mind that such an amendment will change the priority date of the pending application which has been shifted from the Principal to the Supplemental Register. This amendment might leave the application vulnerable to third party applications for similar marks filed in the intervening period between the original filing date and the date of the amendment.
Can an application for the Supplemental Register be based on a foreign registration?
Yes, an application for registration on the Supplemental Register may be based on a foreign registration [see TMEP 1014].
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