801.02   Principal Register or Supplemental Register

801.02(a)   Act of 1946, Principal Register

The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051–1072).  When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act.  The advantages of owning a registration on the Principal Register include the following:

• Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b), 1115(a));
• A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c); TMEP §201.02);
• The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
• The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124);
• The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," subject to certain statutory defenses (15 U.S.C. §§1065, 1115(b)); and
• The use of the United States registration as a basis to obtain registration in foreign countries.

If the applicant does not specify a register, the United States Patent and Trademark Office ("USPTO") will presume that the applicant seeks registration on the Principal Register.

801.02(b)   Act of 1946, Supplemental Register

Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register.  Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091–1096, provide for registration on the Supplemental Register.  This is a continuation of the register provided for in the Act of March 19, 1920. See 15 U.S.C. §1091(a). Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946.  The excluded sections are listed in §26 of the Act, 15 U.S.C. §1094. See Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1256 (TTAB 2012) (finding that while ownership of a registration on the Supplemental Register established opposer’s standing to oppose registration of applicant's mark, it did not establish that opposer owned a proprietary interest in a mark).

In a paper application, if the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register.  If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.

See TMEP §§815–815.04 and 816 regarding examination procedure relating to the Supplemental Register.

An applicant may not seek registration on both the Principal and the Supplemental Register in the same application.  If an applicant requests registration on both the Principal and the Supplemental Register in the same application, the examining attorney must require that the applicant amend to specify only one register, or file a request to divide under 37 C.F.R. §2.87.

A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register.  15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).