Supplemental Register Trademark vs. Principal Register

The United States Patent and Trademark Office (USPTO) has two main registers, the Principal Register and the Supplemental Register. We’ll explain the difference so you know more about what trademark rights you are acquiring. Princpal vs. Supplemental

Supplemental Register

The Supplemental Register is reserved for trademarks that are inherently descriptive but capable of distinguishing their goods/services through secondary meaning. After five years of continuous use, trademarks on the Supplemental may apply to be on the Principal Register under section two of the Lanham Act based upon acquired secondary meaning. Trademarks on the Supplemental Register are less likely to be considered confusingly similar unless the mark seeking registration matches exactly because of their inherent descriptiveness. Some examples of trademarks that started on the Supplemental Register are BEST BUY, BANK OF AMERICA, TEXAS INSTRUMENTS, OVERSTOCK.COM, ETRADE.COM, and 5 HOUR ENERGY.

The main difference between the Supplemental Register and Principal Register is that if you sue someone for infringement on the Supplemental Register you have to prove secondary meaning (consumer recognition), which can be done through consumer surveys, ad expenses, unsolicited publications, etc. On the Supplemental Register you still have a registered trademark, you can still sue someone in federal court, and the registration still prevents other similar trademarks from getting registered.

  • A Supplemental Register trademark is a descriptive mark that is capable of secondary meaning (or consumer recognition).

Examples of Trademarks on the Supplemental Register

The following are examples of marks that were deemed descriptive. Descriptiveness can be designated based on geographic descriptiveness, goods/services descriptiveness, as well as surname. Although, they were deemed descriptive some of the trademarks are now on the Principal Register via a 2(f) claim as explained below.

  • BANK OF AMERICA (geographic)
  • HOTELS.COM (services)
  • 5 HOUR ENERGY (goods)
  • LOWE’S (surname)
  • SMITH (sunglasses) (surname)
  • DOLLAR SHAVE CLUB (services)

Principal Register

The Principal Register is the primary register for trademarks. Marks on this register must be inherently distinctive, and/or have acquired secondary meaning (consumer recognition). Inherently distinctive means that it provides source recognition and does not in any way describe the goods/services. Trademark distinctiveness is typically broken into five classes: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. The final three categories of marks are per se inherently distinctive and entitled to protection under the Lanham Act without proof of secondary meaning.  The following are examples of each:

Suggestive: COPPERTONE (sunscreen); KITCHENAID; NETFLIX

Arbitrary: APPLE (for computers); DELTA AIRLINES; CAMEL (cigarettes)

Fanciful: EXXON (has no other meaning); XEROX; GOOGLE

Descriptive marks are capable of getting registered on the Principal but only after the mark has secondary meaning acquired through exclusive use of the name and wide consumer recognition.

Generic marks are not capable of registration on either register.

I Have a Supplemental Register Trademark, How Do I Get Principal?

Typically, to get listed on the Principal Register you will need to submit evidence of consumer recognition or secondary meaning. You cannot amend the Supplemental Registration to the Principal Register, but instead have to reapply with a new application with a claim for the Principal Register based on Section 2(f) of the Lanham Act. You will want to indicate how you’ve acquired that recognition.  You can indicate the following: 1. Based on Prior Registration (only if you’ve already acquired secondary meaning via a 2(f) claim before for same trademark); 2. §2(f) Claim of Acquired Distinctiveness because of substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement; 3. §2(f) Claim of Acquired Distinctiveness, Based on Evidence, which can be done through consumer surveys, ad expenses, unsolicited publications, anything really.

  1. Refile for 2(f) Principal Trademark Claim Based on Prior Registration (only if you’ve already acquired secondary meaning via a 2(f) claim before for same trademark);
  2. Refile for 2(f) Principal Trademark Claim Based on Acquired Distinctiveness because of substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement; (even though you claim you have substantially exclusive use, Examiner may disagree and require evidence (outlined below).
  3. Refile for 2(f) Principal Trademark Claim Based on Evidence, which can be done through consumer surveys, ad expenses, unsolicited publications, anything really.

Amazon Does Not Accept Supplemental Register Trademarks for Brand Registry

Amazon will not accept registrations on the Supplemental Register for brand registry. The Supplemental Register is reserved for marks that are inherently descriptive but capable of distinguishing their goods/services through secondary meaning. After five years of continuous use, marks on the Supplemental may apply to be on the Principal Register under section two of the Lanham Act (Trademark Act) based upon acquired secondary meaning. Some examples of marks that started on the Supplemental Register are BEST BUY, BANK OF AMERICA, HOTELS.COM, or 5 HOUR ENERGY DRINK.

  • Supplemental Register trademarks are not recognized by Amazon.
  • You can obtain a Principal mark if you have a Supplemental Registration after 5 years continuous use with proof of secondary meaning.
  • You have to follow one of the 3 options above to get registered on the Principal Register. Unfortunately, the government process does take 8-11 months.