There are two types of federal trademark registrations-Principal Register and Supplemental Register. Descriptive marks may not be registered on the Principal Register unless they have been in use in interstate commerce for at least five years, and even then, additional evidence of distinctiveness (such as customer testimonials, etc.) may be required. Descriptive marks may be registered on the Supplemental Register, but only after the mark is in use in interstate commerce. Intent-to-use applications (i.e., applications filed before the mark is in use) may only be filed on the Principal Register.
A descriptive mark is one that is descriptive with respect to the goods or services covered in the application. For example, the mark CLEAR HOOK would be considered descriptive for a transparent fish hook, but it would not be considered descriptive for clothing or restaurant services. Similarly, the mark LITTLE GARMENTS would be considered descriptive with respect to children's clothing but not with respect to maid services.
The Supplemental Register affords some, but not all, of the benefits of the Principal Register. For example, the registered trademark symbol (®) may be used with a Supplemental Register mark, and a mark that is registered on the Supplemental Register may be cited in an Office Action refusing registration in a subsequently filed application (in other words, a Supplemental Register mark has defensive value in that it may prevent someone else from registering the same or similar mark). The Supplemental Register was created to allow holders of marks that may not meet the requirements for the Principal Register to obtain registration in a foreign country under the Paris Convention and other international agreements that require a U.S. registration as a prerequisite to the foreign registration.
There are several significant differences between the Principal Register and the Supplemental Register. First, registration on the Supplemental Register does not constitute prima facie evidence of the registrant's exclusive right to use the mark, as does registration on the Principal Register. Second, registration on the Supplemental Register does not constitute constructive notice of ownership of the mark throughout the United States, as does registration on the Principal Register. Third, a mark registered on the Principal Register becomes incontestable after five years, but a mark registered on the Supplemental Register does not. Thus, Supplemental Register marks do not share many of the offensive advantages of Principal Register marks.
Supplemental Register marks are not published for opposition, and they are not subject to opposition proceedings. (All Principal Register marks are subject to a 30-day opposition period prior to registration.) They are, however, subject to cancellation post-registration, as are Principal Register marks. Supplemental Register marks may not be registered with U.S. Customs (to prevent counterfeit goods from entering the country).
Some marks are clearly descriptive, and a determination can be made to file initially for registration on the Supplemental Register; however, it is sometimes difficult to determine whether a mark will be considered descriptive by the trademark office. For example, the mark GO ANYWHERE TOILET KIT for a portable toilet was not treated as descriptive. Rather than filing initially on the Supplemental Register and foregoing the potential benefits of the Principal Register, another option is to file a Principal Register application and then move the application over to the Supplemental Register if registration is refused on descriptiveness grounds. If the Principal Register application is filed on an intent-to-use basis, an Amendment to Allege Use will need to be filed before the application can be moved over to the Supplemental Register.
