In the United States, the Lanham Act (the U.S. Trademark Law) provides for two different trademark registers--the Principal Register and the Supplement Register. When most individuals talk about registering their trademarks with the USPTO, they are talking about registration on the principal register, but it's important to understand both registers, how they differ, and what rights come with registration on each one.
The Principal Register is the primary trademark register with the USPTO. In order to be approved for registration on the Principal Register, a mark must have achieved a level of distinctiveness in indicating the source of particular goods or services. This distinctiveness can be achieved based on the uniqueness of the mark, length of use of the mark, or exclusive use of the mark.
If a mark is approved for registration on the Principal Register, this provides the mark owner with nationwide priority rights for the use of the mark. Registration creates a presumption of the validity of the mark and initial evidence of ownership of the mark. It also creates the ability for a mark to achieve incontestable status after five years of continuous, uninterrupted use while listed on the Principal Register.
While most are familiar with the Principal Register, fewer individuals are familiar with the USPTO's secondary register, the Supplemental Register. The Supplemental Register creates a place to register marks that are inherently descriptive and do not qualify for registration on the Principal Register, but could still identify the source of goods or services. The idea is that once the brand grows and achieves the necessary acquired distinctiveness, the mark could move from the Supplemental to Principal Register.
It is important to note that the Supplemental Register can only be used for marks that are currently in use (no intent to use applications) and marks that are inherently descriptive. Marks that are denied registration on the Principal Register on grounds other than descriptiveness will not be permitted registration on the Supplemental Register.
So what are the benefits of registering a mark on the Supplemental Register? First, the mark will show up in the USPTO database when others are conducting trademark searches and the registration prevents others from being able to register a confusingly similar mark. Second, the applicant can use the ® symbol with the mark in advertising their goods and services. Third, and most importantly, registration on the Supplemental Register can assist an applicant with proving exclusive use of the mark for a five-year period to support a claim of distinctiveness to move the mark to the Principal Register.
Now, let's talk about the limits of the Supplemental Register. Unlike the Principal Register that provides a presumption of ownership in all 50 states, claims based on supplemental registrations are based on rights akin to what the owner would have at common law. This means that the person bringing the claim must be able to prove to the court that they are using the mark in the area in which they're bringing the suit and that people actually know of the owner and their products or services and would associate the mark with their products or services.
What does this mean for you as a business owner?
Marks registered on the Supplement Register are by their nature insufficient to constitute a distinctive mark that would qualify for the Principal Register. This means that infringement is difficult to prove by a supplement trademark holder. Trademark laws in the U.S. only protect trademarks in circumstances where consumer confusion can occur, and consumer confusion typically only occurs when a mark is widely known or distinctive (i.e. typically registered on the Principal Register).
In practice, Supplemental Register marks do not imply an exclusive right to use the mark or create constructive notice of ownership of a mark. The rights accorded to an owner of a mark on the supplemental register must be evaluated under the same standards as a common law trademark claim.