Business Name Tips from a Trademark Perspective

Considering the Principal vs Supplemental Register and More Distinctive Trademarks

Understanding the Differences Between the Principal Register and the Supplemental Register

When you apply for a trademark, the type of mark and how unique it is will decide if it goes on the Principal Register or Supplemental Register

While it's possible to apply for a trademark and seek placement on the Supplemental Register, most trademarks that exist on the Supplemental Register are there because the United States Patent and Trademark Office (the "USPTO") refused the mark under the Principal Register but will allow for it to exist on the Supplemental Register.

Through this article, you will better understand the pros and cons of the Principal Register vs the Supplemental Register, as well as the types of trademarks that tend to be placed on the Supplemental Register.

Principal Register vs Supplemental Register

Principal Register: Think of the Principal Register is the A-list of trademarks! Brands on this list have strong protection. They're unique and well-known, like Apple® for computers. When you're on this list, you can stop others from using a similar mark, and it's easier to deal with counterfeit goods.

Supplemental Register: This register is like the B-list. Having your trademark registered on the Supplemental Register is still good, but it's not as powerful. They get some protection, but not the full muscle that Principal Register marks get.

Similarities 

While there are very important differences between the Supplemental Register and the Principal Register in terms of benefits and protections, it's important to first understand the ways in which they are similar. If you trademark is regsitered on either the Principal Register or the Supplemental Register, then your registration:

  • provides you with the right to use the ® symbol next to your trademark, which indicates that your mark is registered
  • prevents other similar trademarks from being registered if they are likely to cause confusion with your trademark
  • can be helpful to broaden protection beyond the United States, as the registration can used in lots of foreign countries through the Madrid Protocol
  • is listed in the USPTO database of trademarks, which puts other brands and the public on notice of your trademark registration (and often deters others from adopting a similar trademark)
  • may be used as a basis for filing a lawsuit for trademark infringement in federal court

Differences

A registration on the Principal Register is prima facie evidence that:

  1. your trademark registration is valid;
  2. you own the registered trademark; and
  3. you have the exclusive right, nationwide, to use the registered trademark in commerce in connection with the products/services listed in the registration.

In other words, if you ever have to prove your trademark rights in court, you can simply present you trademark registration certificate on the Principal Register as sufficient proof of validity, ownership, and use. This is not the case if your trademark is listed on the Supplemental Register.

Furthermore, after your trademark has been listed on the Principal Register for over 5 years (assuming your continuous use), your trademark becomes incontestable. This means that the registration of the your trademark cannot be attacked on certain grounds, such as prior use or descriptiveness

Having your trademark registered on the Supplemental Register, while helpful, doesn’t provide the valuable benefits listed above. For example, if your trademark was registered on the Supplemental Register and your trademark was disputed in court, you would have to prove through additional evidence that (1) you own the trademark, (2)  the trademark is valid, and (3) you have sufficient used the trademark in commerce. While this may sound like minor legalese, this difference is consequential this can lead to significant expenses and time defending your trademark.

Note as well that it is possible for a trademark that's originally listed on the Supplemental Register to later be "promoted" to the Supplemental Register. If you own a trademark on the Supplemental Register trademark, you can seek to re-apply for the Principal Register at a later time. 

More Unique Trademarks Live on the Principal Register

Now that you understand the differences between the Principal Register and the Supplemental Register, you can see why brands would rather be on the Principal Register. So how can you ensure that your trademark is on the Principal Register?

The short answer is that Principal Register is reserved for the most unique trademarks. 

When analyzing how unique a trademark is, it's important to consider the the different "types" of trademarks when it comes to uniqueness, or "distinctiveness." 

  1. Fanciful Trademarks: These are made-up words like "Kodak." They're super unique because they didn't exist before. These trademarks are certainly unique enough to exist on the Principal Register.

  2. Arbitrary Trademarks: These use real words/phrases that in unexpected ways. A common example here is "Apple" for computers. The word "apple" is well known and defined in the English language, but it does not have any descriptive meaning or connotation in the world of technology and computers. Since these kinds of trademarks are so unique in context, they will be accepted on the Principal Register.

  3. Suggestive Trademarks: These hint at what they're about, like "Netflix" for streaming services, or "Jaguar" for a company that sells high-end and fast cars. They make you think a little but don't describe the product directly. Because these trademarks are "suggestive" but not descriptive, they will get protected under the Principal Register because they're still pretty unique.

  4. Descriptive Trademarks: These directly describe the product or service, like "Cold and Creamy" for ice cream. Because they're more descriptive, they will likely get placed on the Supplemental Register. 

  5. Generic Terms: These are common names for products, like "Bicycle" for bikes. They can't be trademarked at all because they're too general. Generic terms cannot be registered as trademarks on the Principal or Supplemental Register.

In other words, here's a helpful way to think about this:

  • The Principal Register is proper for trademarks that are fanciful, arbitrary, or suggestive. 
  • The Supplemental Register is proper for trademarks that are merely descriptive.
  • Generic terms are not registrable at all as trademarks.

Putting It All Together: What This Means for YOUR Brand

Because your trademark will get more protections on the Principal Register, from a trademark perspective it is better for your trademark to be unique (fanciful, arbitrary, or suggestive).

A lot of our clients, however, end up on the Supplemental Register because they’re using descriptive trademarks. And from a marketing perspective, there can certainly be an advantage to using a more descriptive trademark. Plus you'll still be able to use the ® symbol and enjoy the other benefits above from being on the Supplemental Register.  Plus, because the distinctions here are pretty nuanced and not known by most business owners, your trademark registration on the Supplemental Register will still likely deter many other business owners who are considering your trademark or something similar.

That said, many branding experts, naming strategists, and trademark attorneys agree that making your trademark "suggestive" accomplishes the best of both worlds. By choosing a trademark that is suggestive, you are able to enjoy the extra benefits of the Supplemental Register as well as the marketing benefits of a trademark that "makes sense" to your audience based on what your business is about.

For a great resource on coming up with a strong suggestive brand, we highly recommend that you check out Alexandra Watkins, Owner of the Eat My Words® naming agency. You can find a very helpful (and free!) name evaluation test on her website here.

In conclusion, having your trademark registration listed on the Supplemental Register is certainly not the end of the world. And from a marketing perspective, a descriptive trademark on the Supplemental Register may be better for your brand than a trademark that’s more unique and suited for the Principal Register.

DID YOU KNOW?

Without trademarks, you have ZERO rights to your brand. 

We’re talking business names, logos, slogans . . . even podcast titles. Lots of entrepreneurs don’t protect their trademarks until it’s too late. So we made a short, free video to help you avoid the biggest, most dangerous mistakes that business owners make.

Wanna see it?

UH, YES PLEASE!