Business Law Blog

Pros & Cons: Principal Register Vs. Supplemental Register

Posted by Amanda Butler Schley | May 02, 2024 | 0 Comments

When it comes to trademarks, understanding the difference between the principal register and the supplemental register is crucial for securing the best protection for your brand. The principal register is the top tier, reserved for trademarks with the highest level of distinctiveness, offering greater legal safeguards. On the other hand, the supplemental register provides an alternative for marks that do not meet the stringent criteria of the principal register.

Navigating the nuances of trademark registration can be complex, especially when determining whether your mark qualifies for the principal or supplemental register. The distinction lies in the level of creativity and uniqueness your mark possesses, impacting the extent of protection it receives. At Business Law Group, our Louisiana trademark attorneys help companies make informed decisions to safeguard their brands effectively. To learn more, consider connecting with us at (504) 446-6506 today.

What Are the Key Differences between the Principal and Supplemental Registers?

Trademark registration is a vital step in safeguarding intellectual property. Understanding the disparities between the principal register and the supplemental register is crucial for individuals and companies seeking comprehensive IP protection. The following are the key contrasts between the two registers:

  • Protection Scope: the principal register provides strong legal protection for trademarks with high distinctiveness, while the supplemental register offers protection to marks that do not meet the strict criteria of the principal register. However, the protections are not as expansive as those on the principal register.

  • Distinctiveness Requirements: the principal register requires marks to be inherently distinctive or have acquired distinctiveness through use. The supplemental register, on the other hand, allows the registration of descriptive or generic marks that may acquire distinctiveness over time.

  • Benefits and Limitations: the principal register grants exclusive rights nationwide and can serve as evidence of validity, ownership, and exclusive rights in legal proceedings. The supplemental register provides a limited scope of protection and does not confer all the benefits of the principal register.

  • Corrective Action: the principal register allows for corrective measures to enhance the distinctiveness of a mark, such as disclaimers or amendments, but the supplemental register enables marks to move to the principal register if they acquire the necessary distinctiveness.

  • Use in Commerce: the principal register requires a mark to be in use in commerce at the time of registration while the supplemental register accepts marks not yet in use in commerce but must intend to use the mark in the future.

What Are the Benefits of Registration on the Principal Register?

When comparing the principal register versus the supplemental register for trademark registration, the principal register stands out for offering the highest level of protection and benefits for trademark owners. Here are some key advantages of registering on the principal register:

  • Strong Legal Presumption: trademark registration on the principal register provides a strong legal presumption of the ownership of the mark and exclusive rights to use it nationwide.

  • Enhanced Remedies: registration on the principal register grants trademark owners access to enhanced legal remedies, including the ability to seek statutory damages and attorney's fees in case of trademark infringement.

  • Constructive Notice: by being listed on the principal register, trademark owners gain constructive notice of their rights, meaning that others are presumed to be aware of the registered mark.

  • Potential for Incontestability: after five years of continuous use following registration on the principal register, trademark owners can apply for incontestable status, further solidifying their rights against potential challenges.

  • International Benefits: registration on the principal register can serve as a basis for securing trademark protection in other countries through international treaties and agreements.

  • Exclusive Use of the ® Symbol: trademark owners on the principal register have the exclusive right to use the ® symbol with their mark, signaling to others that the mark is registered and protected.

What Are the Benefits of Registration on the Supplemental Register?

The supplemental register serves as a valuable platform for mark owners looking to secure trademark protection for their assets. While it may not offer the extensive advantages of the principal register, registering on the supplemental register comes with its own set of benefits that cater to specific needs and circumstances. Here are some significant advantages:

  • Use of Registration Symbol: registrants on the supplemental register can leverage the registration symbol, signaling to others about the protected status of their mark.

  • Protection Against Registration: once a mark is on the supplemental register, it safeguards against similar trademarks attempting registration on both the supplemental and principal registers.

  • International Registration: mark owners can explore registering their mark in other countries that provide reciprocal trademark rights, enhancing global protection and recognition.

  • Relief in Infringement Lawsuits: in the event of an infringement lawsuit in federal court, having a mark on the supplemental register offers the potential for legal recourse and protection.

Though the benefits are notable, it is crucial to recognize that registration on the supplemental register implies an acknowledgment that the mark may not yet exhibit the distinctiveness required for the principal register. At Business Law Group, we believe that this distinction shapes the strategic decision-making process for trademark owners seeking appropriate avenues for brand protection.

Frequently Asked Questions

What Determines if a Trademark Is on the Principal or Supplemental Register?

The distinct nature of a trademark is a key factor in determining whether it is eligible for registration on the principal register for federal trademark protection or the supplemental register. Suggestive, arbitrary, and fanciful trademarks are more likely to qualify for the principal register.

What Are the Basic Criteria for Registering a Trademark on the Supplemental Register?

Before applying to register a trademark on the supplemental register, you must be lawfully using the mark in commerce with the identified goods and/or services. Unlike the principal register, registration on the supplemental register requires actual use of the mark.

Speak with an Experienced Louisiana Trademark Attorney at Business Law Group Today

The differences between the principal register and the supplemental register are some of the most complex aspects of intellectual property. Understanding the fundamental differences between both registers as well as the strengths and shortcomings of each option should be considered prior to moving forward with a registration strategy. 

At Business Law Group, our business is understanding yours. Our seasoned Louisiana trademark attorneys take the time to understand your business objectives and develop an IP strategy that most effectively protects your brand. To begin the process of protecting your intellectual property today, consider booking an appointment online or contacting us at (504) 446-6506 today.

About the Author

Amanda Butler Schley

Ranked as a Top Rated Business and Commercial Attorney, I have more than a decade of experience representing boutique hotels, family-owned businesses, privately owned restaurants, breweries, artists, executives and entrepreneurs.


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Who We Are

Business Law Group is a boutique business services law firm in New Orleans, Louisiana. Our focus is on understanding the legal pitfalls of your business and industry, as well as the secrets to maximizing your legal leverage at every opportunity and in every negotiation. We work selectively with clients that aren't ready for the overhead expense of an in-house general counsel, but understand the advantages of having a trusted legal advisor on their team. Amanda Butler has been ranked as a Louisiana SuperLawyer, New Orleans Top Lawyer, Best Lawyers, and in Leaders of Law.