Most people think that getting a trademark registered with the United States Patent and Trademark Office (“USPTO”) means that their trademark is added to a single federal registry with one set of resulting legal rights and benefits. The reality of trademark registration is more complicated, however.

Federal law provides for two different U.S. trademark registries - the “Principal Register” and the “Supplemental Register.”

The Principal Register 

The Principal Register is the “gold standard” registry on which all trademark owners should aspire to have their marks registered. Trademarks registered here come with numerous important legal rights and benefits not available to trademarks registered on the Supplemental Register or on any U.S. state trademark registries. Just some of these rights and benefits include:

• The USPTO’s refusal to register the same or any confusingly similar trademark later filed by another party.
• Constructive notice to the public of the trademark registrant’s ownership of the federally registered trademark;
• The right to use the circle R symbol with the federally registered trademark;
• A legal presumption that the federally registered trademark is valid;
• A legal presumption of the trademark registrant’s ownership of the federally registered trademark and their exclusive right to use it in commerce throughout the entire U.S. and its territories, on or in connection with the goods and/or services listed in the federal trademark registration;
• The ability to file the underlying trademark application before actual use of the trademark begins;
• A date of constructive use of the federally registered trademark, as of the filing date of the underlying trademark application;
• The ability to recover enhanced damages in a successful legal action concerning the federally registered trademark;
• The ability to file the federally registered trademark with U.S. Customs and Border Protection to prevent the importation of infringing foreign goods;
• The ability for the federally registered trademark to become “incontestable” after five years of continuous and exclusive use in commerce, which prevents it from being challenged on certain legal grounds, such as prior use or mere descriptiveness; and
• Use of the federally registered trademark as a basis to obtain registration of the same mark in foreign countries.

To get a trademark registered on the Principal Register, the applied-for trademark must (in addition to meeting other criteria) either be “inherently distinctive” or have “acquired distinctiveness.” In either case, the trademark must be capable of distinguishing the trademark owner’s goods or services from those of others. To be inherently distinctive, the applied-for trademark must be fanciful, arbitrary, or suggestive.

Trademarks that the USPTO determines to be “merely descriptive” or “generic” are not inherently distinctive. While generic trademarks are almost never registerable, merely descriptive trademarks can still be registered on the Principal Register upon proof of “acquired distinctiveness.” This means that the relevant consuming public must recognize the trademark as indicating the source of the applicable goods or services, rather than as a description of them. Without proof of acquired distinctiveness, however, the only other way for merely descriptive trademarks to achieve federal registration is through the Supplemental Register.

The Supplemental Register

Trademarks registered on the Supplemental Register enjoy fewer rights and benefits than those registered on the Principal Register. However, there is still value in getting a trademark registered here if ineligible for the Principal Register. That value comes from the following rights and benefits:

• The USPTO’s refusal to register the same or any confusingly similar trademark later filed by another party;
• The right to use the circle R symbol with the federally registered trademark;
• Use of the federally registered trademark as a basis to obtain registration of the same mark in foreign countries;
• Third parties cannot oppose the registration of the applied-for trademark because Supplemental Register applications are not published for opposition by the USPTO; and
• Use of the federal trademark registration as evidence that it has been continuously and exclusively used for five or more consecutive years (useful when later seeking registration on the Principal Register for the same, previously ineligible trademark).

To get a trademark registered on the Supplemental Register, the applied-for trademark must already be in use at the time of filing, or at the time of amending the trademark application to the Supplemental Register.

Conclusion 

The trademark registration process is complicated and has numerous potential pitfalls for the unaware. As such, trademark applicants would be wise to work with an experienced trademark lawyer who can help them successfully navigate and explain the process, obtain the appropriate trademark registrations, and most effectively protect their intellectual property rights.