When you file for a federal trademark, there are two potential registers your mark could get approved for: the Principal Register and the Supplemental Register. If your mark is not approved for the Principal Register because of a lack of distinctiveness, it may be able to find new life on the Supplemental Register. Though both registers provide federal protections, the full list of trademark rights differs depending on which register your mark ends up on.
A main difference between the Principal Register and the Supplemental Register is strong, distinct trademarks go on the former and weak, non-distinct trademarks go on the latter.
You might be thinking that weak trademarks can’t be registered with the United States Patent and Trademark Office (USPTO). This is generally true. However, the Supplemental Register is a bit like a lifeboat for otherwise non-distinct trademarks.
If an examining attorney at the USPTO believes a trademark does not function as a brand-identifying mark, it is weak. But if they believe the mark has the capacity to become distinct with enough time in the market, they might declare it worthy of the Supplemental Register. Let’s go over what distinctiveness looks like for trademarks.
At its core, distinctiveness in trademarks is determined by how well the average consumer can tell that your product/service belongs to your brand based on the mark. For example, the average American does not need any additional context clues when asked, “Want to go to McDonalds?” and can pinpoint that the fast food franchise is connected to the slogan, “I’m Lovin’ It.”
There are five different categories of trademark distinctiveness:
Inherently distinct marks are typically categorized as fanciful, arbitrary, or suggestive. They qualify for the Principal Register. Non-distinct marks are generally descriptive, and qualify for the Supplemental Register. (They can graduate to the Principal Register if they become distinct through use.) Generic marks are not enforceable as trademarks through any means, on any register.
Whether you get your mark on the Principal/Supplemental Register or do not apply for federal registration at all, it’s important to have a clear understanding of your trademark’s rights.
A trademark does not need to be registered to gain common law trademark rights. Once a mark is used in commerce through its connection to goods/services being sold to consumers, it has inherent protections. To boost those protections, a mark can be registered at the federal level, where it’s placed on either the Principal or Supplemental Register. (Trademarks can be registered at the state level, too.)
When we think of a registered trademark ‘ s rights, we are probably thinking about the Principal Register. This offers the most robust federal protections, including the assumption that your mark is valid and you own it, which can go a long way in curbing trademark infringement.
Below, we detail what rights to expect with these different federal registration and unregistered options.
Presumption of Ownership
Incontestability of the Mark
