The Principal and the Supplemental Registers ~ Why Amazon Sellers MUST Be Aware of the Difference!
The Federal Trademark Register is made up of two separate registers—and they are not created equal.
The Principal Register is just that—the principal, primary list of trademarks with the fullest federal protection.
The Supplemental Register, on the other hand, is the second string, reserved for trademarks that couldn’t quite make the cut for the Principal. Let’s just call them the benchwarmers. Generally, this register is the home to trademarks that would be considered “merely descriptive” of the underlying goods and/or services associated with the trademark.
So, what exactly is the difference?
Principal Register
The Principal Register is what all trademark owners are after. Once listed as the owner of a trademark on the Principal Register, you are legally presumed to be the exclusive owner of that trademark within the United States. This register also gives you full rights to the trademark in a court of law, should you need to pursue an infringer.
You can use the fancy ® by your mark as indicia of registration, and apply for incontestability after five years of use. How cool is that?
Trademarks that are unique, distinctive, and not merely descriptive of goods and services are typically eligible for registration on the Principal Register. {You do NOT want a trademark that is merely descriptive of your goods or services. But not to worry. We can help you!}
Currently, only trademarks on the Principal Register are eligible for Amazon’s Brand Registry enrollment program. So, if you think simply moving an applied-for trademark to the Supplemental Register because you’ve been issued a “descriptiveness refusal,” BEWARE!
Supplemental Register
The Supplemental Register, while generally seen as less powerful than its counterpart, still offers some protection. Trademark owners on the Supplemental Register can use the ® symbol (woohoo!), and the trademark may be used as a basis for refusal for subsequently-filed confusingly similar trademark applications.
Unfortunately, a trademark on the Supplemental can never achieve incontestability.
And please, keep in mind, as mentioned previously, trademarks on the Supplemental Register are NOT currently eligible for Amazon’s Brand Registry program.
Still, further, you cannot record a trademark that is on the Supplemental Register with US Customs. So, think twice before simply amending your trademark application to the Supplemental Register if you received a mere descriptiveness refusal. A trademark attorney {like yours truly} may be able to assist you in developing legal arguments to overcome such a refusal!
The bright side? Descriptive marks can actually achieve “acquired distinctiveness” after five years of use in commerce.
Some trademarks may wait out this sentence with a thin layer of protection on the Supplemental Register. In short, they can just hang out on the bench while the distinctiveness hopefully improves over five years of use in commerce.
So, how can you avoid being bumped to the Supplemental Register?
First, choose a strong trademark at the outset! {We can help you through your trademark creation process!}
Now, while it’s better to create a strong trademark at the outset, if you do end up with an arguably descriptive mark, instead of just moving the trademark to the Supplemental Register ~ which is what is often suggested in an Office Action from the USPTO ~ you may want to consider trying to prepare arguments to overcome the descriptiveness refusal.
Convincing the Examining Attorney that your trademark should be considered for Principal Register enrollment is certainly within the realm of possibility, but formulating extensive legal arguments does not necessarily mean a slam dunk.
Key takeaways:
- Create a strong mark at the outset. The Trademark Trailblazer: The Brand Name Creation Blueprint, will guide you through the land mines of trademark creation ~ and will teach you how to avoid the legal traps, like ending up with a trademark that is weak and subject to a merely descriptive refusal.
- Beware of simply amending a trademark application to the Supplemental Register. {You may think it’s an easy fix, but you might be surprised. There may be unintended consequences….}
- Even if your trademark ends up on the Supplemental Register for a while, don’t lose sight of the fact that you are building a brand, and not an Amazon business!
Second-string is better than not even being on the field!!!
Do you need help creating a trademark that’s unique, distinctiveness and will not be subject to a mere descriptiveness refusal? Apply to work with us and ask about our Black Diamond Service!