Inherent versus Acquired Distinctiveness and the two Trademark Registers

The Principal Register and the Supplemental Register are two distinct registers within trademark law in the United States, each serving a different purpose and offering varying levels of protection for trademarks. Understanding the differences between these registers is crucial for trademark owners seeking to protect their intellectual property effectively.

Eligibility: The Principal Register is reserved for marks that are inherently distinctive or have acquired distinctiveness through extensive use in commerce. These marks enjoy stronger legal protection and exclusive nationwide rights, including the ability to sue for infringement in federal court. In contrast, the Supplemental Register is for marks that do not initially qualify for the Principal Register due to a lack of inherent distinctiveness but are capable of distinguishing goods or services through use. However, the protection on the Supplemental Register is more limited and primarily prevents others from registering identical or similar marks on the Principal Register.

Presumption of Validity: Registering a mark on the Principal Register creates a presumption of validity and ownership, making it easier for the trademark owner to enforce their rights against potential infringers. Conversely, marks on the Supplemental Register do not benefit from such a presumption, and registrants must prove distinctiveness through evidence of use.

Use Requirement: Both registers require use in commerce as a prerequisite for registration or within a certain time after filing. This use requirement underscores the importance of actual commercial use of the trademark in protecting the rights associated with it.

Filing Basis: Marks on both registers can be based on actual use in commerce or an intent-to-use (ITU) basis. However, ITU applications must eventually submit a Statement of Use to complete registration for both registers.

Descriptive Marks: Descriptive marks, which describe the characteristics or qualities of goods or services, face a higher bar for registration on the Principal Register. However, they are more suitable for registration on the Supplemental Register, where distinctiveness can be gained over time through use.

Geographic Restrictions: The Principal Register imposes no geographic restrictions on use, allowing trademark owners to enforce their rights throughout the United States. In contrast, the Supplemental Register may include geographic restrictions to limit the scope of use to specific regions.

In summary, the Principal Register offers stronger protection, a presumption of validity, and exclusive nationwide rights to inherently distinctive or acquired distinctiveness marks. On the other hand, the Supplemental Register is a useful option for marks lacking inherent distinctiveness but still capable of distinguishing goods or services. Understanding these differences is essential for trademark owners when deciding where to register their marks to best protect their intellectual property rights.