Supplemental Register vs Principal Register

When filing for a federally trademark, you’re hoping to obtain registration on the principal register. However, as noted in our post about the Trademark Distinctiveness Scale, merely descriptive marks are not automatically registrable on the principal register. This issue often arises when the Office returns an action on the application declaring it descriptive and requiring the applicant to prove a secondary meaning before the mark is granted.

Responding to such an office action is a job for an attorney, and such actions are included with the Levine Law Group’s Trademark Registration Package. If a mark has attained a secondary meaning, your attorney can draft a formal response persuading the Office of the mark’s distinctiveness. If it hasn’t quite attained such distinctiveness, the applicant has two options. The application can either be filed for registration on the Supplemental Register, or withdrawn to re-file upon attaining the requisite level of distinctiveness.

The Supplemental Register offers a very limited amount of protection for a descriptive mark, but allows the applicant to maintain a particular filing date, hence priority over any subsequently filed marks. Also, marks registered on the Supplemental Register are free to use the same “®” indicator in commerce, as those registered on the principal register. If a mark stays on the supplemental register uncontested for five years, an attorney can petition for its transfer to the principal register.