TM registration in the USA: two different Registers

Contrary to many EU countries, The United States Patent and Trademark Office (USPTO) proposes two different sorts of registration for trademark: the Principal Register and the Supplemental Register.

The aim of this article is to explore the two possibilities, discussing the differences and the advantages of each.

If we want to draw a first and basic line between the Principal and the Supplemental register, it is possible to say that the Principal Register is used for strong marks whereas the Supplemental Register is used for weaker marks. These two different registers are established by the US Federal Trademark Statute: The Lanham Act. The differences between strong and weak marks is explained below.

  1. The Principal Register

In order to be able to be registered on the Principal Register, a mark must comply with several characteristics:

  • Fanciful mark or invented terms such as Kleenex for tissues

  • Arbitrary marks, it can be everyday terms that are appropriated for products having no relation whatsoever to the term. As example, we can take Apple, the name has no relation to computers

  • Suggestive mark, should not describe the product for which they are used. For example Smiley, it is suggestive, you think about a smiling face, however it does not describe the product for which they are used. The smiley logo is used for a lot of different products which could not be guessed just reading the name of the brand

Now we have described the conditions for a brand to be registered within the Principal Register, it is time to discuss the Supplemental Register.

  1. The Supplemental Register

This register concerns weak marks, in other words marks that cannot be registered as a proper trademark on the Principal Register.

The two main problems for these brands are:

  • It is a descriptive mark, it means the mark describes the good or the service for which they would like to be registered. An example could be the registration of the mark ‘creamy’ for a cream product.

  • It is generic term, it encompasses words that are common name for the products or for the services. Some trademarks can become generic terms, it was the case for some marks such as Aspirin or Escalator.

The last part of this article will be dedicated to the main advantages of both systems.

  1. Advantages of both systems

Advantages of the Principal Register and the Supplemental Register:

  • The marks benefit from a double protection, firstly from the USPTO (US patent and trademark office) as well as from the possible action of opposition or cancellation.

  • The term of the protection is ten years, renewable for ten years.

  • The registered symbol can be used ®.

Holding a trademark in the USA may be of advantage when trying to protect the same mark in other countries.

Advantages only applicable to the Principal Register

  • This registration is stronger and allows the registrant some additional benefits

  • The registrant can claim he is the owner of the brand in case someone else wants to register the same brand or a really similar one.

  • The registrant has the possibility to claim priority of use of the mark. This means that you can use your trademark and when applying for internationally trademark within a certain time of your application. Concretely your latest application is treated as if you applied on the same date as in your first application.

  • Finally, the registrant can claim the mark as being effective from the filing date of the application (federal application). This date can be earlier than the effective date of use of the mark in the commerce.

  • The applicant can benefit from a registration of his mark with the customs office and can block importation of counterfeit products.

  • Because the mark is registered, it is assumed that the trademark is distinctive: it creates a presumption which can help in case of judicial action.

It is important to note that a mark registered on the Supplemental Register does not benefit from a priority of use. If someone else uses the same brand in the commerce and decides to register it, the mark on the Supplemental Register does not have any priority. One point worth noting for the Supplemental is the quickest process in case it becomes admissible to the Principal Register.

Even if the registration on the Supplemental Register is really weaker, it can be nonetheless worth doing it. It gives to the mark some benefits and it may be the only option for some marks. It is important to note that one of the main benefits of the Supplemental Register is to prevent anyone else to register a mark confusingly similar on the Principal Register or even on the Supplemental Register.

The Supplemental Register allows you to use a descriptive mark without any risk that someone else could register it before you. In case you do not register your mark to the Supplemental Register, you can start using a descriptive mark but there is the risk that someone else could register the brand on the Principal Register. The only available option for you would be to try to cancel or to oppose the mark. Moreover a mark registered on the Supplemental area is waiting for five years until it acquired secondary meaning as a trademark and then probably be able to be registered on the Principal Register.

Finally, the Supplemental Register gives you the benefit of having no publication for the opposition phase (contrary to the registration on the Principal Register), your mark is immediately registered. This can help you to gain awareness from your clients on the market and then to register your mark. However when you apply five years later to register on the Principal Register, your mark will be published for opposition and others will have the chance to block your registration.