U.S. Trademark law has two registers on which trademarks can be registered. They are: (1) the Principal Register; and (2) the Supplemental Register. The Principal Register is preferred because its registrations acquire greater legal rights and benefits than registrations on the Supplemental Register. However, there are some requirements for the Principal Register that do not apply to the Supplemental Register. Usually a trademark owner applies for a registration on the Principal Register. If the application fails to meet all the requirements for registration on the Principal Register, the application may be converted to an application for registration on the Supplemental Register.

A common basis for refusing registration of a proposed trademark on the Principal Register is that the proposed trademark does not appear to be distinctive; that is, does not appear to be able to distinguish the goods or services of one company from the goods or services of other companies in the commercial market. A reason for the lack of distinctiveness can be that the text of the proposed trademark describes some characteristic or feature of the goods or services and therefore would not be regarded by a customer as a trademark owned by one company. Instead the trademark would be regarded as a description of a characteristic or feature of the goods or services. Descriptive words are not registrable on the Principal Register because all competitors need to be able to use words which describe their goods. Another common reason for a lack of distinctiveness is that the proposed trademark is merely a surname (family name).

A trademark, which is initially not distinctive, can become distinctive and registered on the Principal Register by showing that the trademark has acquired distinctiveness. A trademark can acquire distinctiveness by being used so long and so extensively that customers come to regard the trademark as distinctive; that is, the trademark has acquired goodwill and recognition among customers who now have the perception that all similar goods or services for which the trademark is used come from one trademark owner.

If the proposed trademark has NOT acquired distinctiveness, the lack of distinctiveness does not prevent registration on the Supplemental Register. Applications for registration on the Supplemental Register are not published for opposition before registration.

Registrations on both the Principal Register and the Supplemental Register provide the following benefits:

• • prevent subsequent registration of conflicting trademarks on both the Principal Register and the Supplemental Register;
  • permit the registrant to use the ® symbol that signifies a federal registration and can use the registration number;
  • make the trademark available to appear in trademark searches by others seeking to determine whether their proposed trademark is available;
  • provide a basis for a right to obtain a foreign registration and priority.

In addition to the benefits listed above, a registration on the Principal Register also provides the following benefits:

• • after five years of continuous, uninterrupted use from the date of registration on the Principal Register, the trademark can get “incontestable” status. That status reduces the grounds that another company can use to cancel the trademark registration. An incontestable registration cannot be cancelled on the basis of
    • • descriptiveness;
      • primarily merely a surname;
      • likelihood of confusion;
      • priority of use
      • non-ownership of the mark at the time of registration
      • a presumption of the validity of the trademark;
      • prima facie evidence of ownership of the mark;
      • the registrant may bring suit for infringement in federal court;
      • some of an infringer’s defenses are eliminated.