Greetings. I’m trademark attorney Josh Gerben, and I would like to talk a little bit about the difference between the principal and the supplemental register. The principal and the supplemental register are the two registers that you could actually end up on when you file a trademark application. It is what it sounds like. You’d rather be on the principal register.
The principal register is a register that is reserved for the most unique trademarks. It basically says that once you have a registration on the principal register that you are the presumed owner of that trademark in all 50 states. So if you walk into a court of law and there is a lawsuit, you are the presumed owner. It is someone’s duty in the lawsuit to have to rebut that presumption, and they would have to prove that for some reason you’re not the owner. It’s very hard to do that. So when you have a principal register registration, you’re in really good shape.
Now, how do you get on the principal register? The one way you can do it is your trademark has to be unique. When I say “unique,” it can be a made-up word, like Kodak or Nike, or it can be a word that’s very common in the English language, but doesn’t have a lot to do with your product, for example Apple for computers. The more your trademark describes your product or service, the less likely you’re going to get on the principal register, and this is why the supplemental register exists. It’s not that the supplemental register is bad.
A lot of my clients end up on the supplemental register because they’re using descriptive trademarks, and the reason that we use trademarks that describe our goods or services is because for marketing purposes it works. So what are some examples here? Let’s say you wanted to have a sports nutrition line and you wanted to call it Super Nutrition. Well, using a laudatory word like super or great, those are not really unique trademarks. They’re supplemental register material. So, sure, you can get a trademark on Super Nutrition, provided somebody else already hasn’t, and get a registration, but the scope of protection is going to be pretty narrow on that. I’ll talk about that in a second. The other example that I would have is Sweet Lollipops. Okay. So a lollipop is sweet. We know that, but that’s your name, Sweet Lollipops. Okay. That’s a descriptive trademark.
So what does it mean to be on the supplemental register? Well, as opposed to the principal register, you do not have the presumption of federal ownership. This means that if you were to sue somebody, you would have to prove that in the area you’re suing them that people actually know of you, know of your product, or know of your service and would associate this trademark with your product or service. So it’s much harder to win a lawsuit from a trademark perspective if you just have a supplemental register registration.
Now, let’s talk about the benefits. The benefits of a supplemental registration are that you get to still use the circled R, so you have your trademark, and the circled R goes there when you get the registration. Everyone is going to know you have a federally registered trademark. In addition, the government will still deny a trademark that is identical to yours or that may be very similar. You’re not going to get the same umbrella of protection that you would get if you had a principal register registration, but you’re still going to get protection from the government.
Then the other point as to why the supplemental registration is good is the deterrent that you get from having that registration. A lot of people, if you’re using a trademark attorney or just doing a search yourself, if they come across your registration, they’re going to say, “Hey, this person has a registration. Even though it’s a pretty descriptive trademark, we don’t want to get involved. We don’t want to create a problem. So we’ll go a different direction.” So you still get the very good value of having a deterrent of a trademark registration, even though you’re on the supplemental register.
So it’s not the end of the world, and, again, from a marketing perspective, a descriptive trademark may be better for you than a trademark that’s more unique, like a Nike or a Kodak or an Apple Computer.