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The following provides more information about some of the basic differences between a trademark that is registered on the Principal Register and a trademark that is registered on the Supplemental Register.
Many people are surprised to discover that the United States Trademark Office has two types of Registers on which a trademark may be registered. These two types of Registers are the 1) Principal Register and the 2) Supplemental Register, which each come with their own advantages and benefits, as well as limitations.
To qualify as a trademark for the Principal Register, the trademark has to satisfy all legal requirements for a trademark. Accordingly, at its most basic level, a trademark cannot be generic. Generic trademarks are never registerable with the Trademark Office, and if a mark is shown to have become generic over time, then the trademark can be canceled.
Further, there are various other categories of trademarks that applicants frequently tend to apply for that are likely to face initial refusal and rejection by the Trademark Office.
Such marks include:
1) Marks that are merely descriptive
2) Marks that are deceptively misdescriptive
3) Marks that are primarily geographically descriptive
4) Marks that are primarily geographically misdescriptive
5) Marks that are primarily merely a surname (last name or family name)
6) Marks whose specimens are rejected as being purely ornamental matter
The marks that are listed above are usually not considered inherently distinctive, and thus are not seen as capable of operating as a trademark that indicates the source or origin of the identified goods or services in one’s trademark application and distinguish them enough from those of others.
However, the good news is that (depending on the specifics of each case) such marks may be eligible for registration on the Supplemental Register. The principle behind creating the Supplemental Register is that these marks have the potential for acquiring distinctiveness over time. In other words, these marks may be used in such a way over time and with extensive marketing, advertising, and publicity, as well as profitable sales, that the marks become very recognizable in a particular industry or field.
If your mark is rejected for any of the reasons listed above, then it is likely that your mark is ineligible to be registered on the Principal Register. However, the good news is that there is a second option.
It may be possible to register or to amend your application to be registered on the Supplemental Register. The Supplemental Register has many benefits that may be of interest to you.
However, it is also important to note that not all of the benefits and advantages provided by being registered on the Principal Register are provided by the Supplemental Register. The following is a general list of some benefits of moving forward with registration on the Supplemental Register and some limitations to be aware of.
Benefits of Supplemental Register:
1) Trademark Symbol- If registered on Supplemental Register, you are eligible to use the ® symbol with your trademark
2) Prevent later filed confusingly-similar trademark applications from being Registered-The Trademark Office may reject later filed trademark applications that are confusingly similar with your mark even if your mark is registered on the Supplemental Register
3) Inclusion in Federal Trademark Database-Your trademark will be included in the United States Patent and Trademark Office list of registered trademarks
4) Notice- Provides notice to third parties doing clearance searches hoping to use a similar or the same trademark
5) Federal Registration Offering a Level of Protection for your Mark- A means for providing some protection to your trademark while your trademark develops “distinctiveness” through continuous, uninterrupted use
6) 10-year minimum term period- As long as your mark is not abandoned and is in continuous, uninterrupted use (or becomes subject to other issues that may cause cancellation of your trademark), you are presumed to be entitled to federal registration for at least 10 years, which may be renewed at that time.
Limitations of Supplemental Register (when compared with Principal Register)
1) No Presumption of Ownership, Exclusive Rights of Use, or Validity-
If a mark is eligible for a Principal Register, there is a presumption that the trademark is distinctive and/or has complied with all of the requirements for an eligible trademark. Further, there is a presumption that the trademark holder is the rightful owner, that the mark is presumed to be valid, and that the trademark hold has “exclusive” rights of use of the trademark in association with the registered goods and services in all 50 states.
A trademark that is registered on the Supplemental Register has:
1) no presumption of ownership by the trademark owner
2) no presumption of the validity of the trademark (meaning that the trademark is not presumed to comply with all of the trademark requirements); or
3) no presumption of the exclusive right to use the trademark in all 50 states.
This has many practical implications of which you should be aware. If you become involved in a trademark dispute and are sued or sue another party regarding your trademark, because there is no presumption of exclusive ownership, exclusive rights of use, or validity, as the trademark holder, you will still have the burden to prove that your mark is known in that particular geographic area, in that industry, and in association with those goods and services. (for marks registered on the Principal Register, the burden of proof is on the other party to prove that a registered does not have exclusive rights of ownership, rights of use, and validity). Further, it may be less desirable for some parties to license your mark as is on the Supplemental Register.
2) Limited Rights of Enforcement
a. Limited rights of protection at the Trademark Trial and Appeal Board (e.g. limited rights of opposition)
b. Limited rights of protection at the United States Customs Office
3) Cannot “Amend” to Principal Register- To gain full advantages and statutory presumptions of the Principal Register, you must re-file your trademark application in the future when your mark can meet all of the requirements (including distinctiveness)
The good news about the Supplemental Register is that the marks have the potential of becoming “stronger” marks with secondary meaning. At that time, the trademark holder may file a new application to be considered on the Principal Register along with evidence of acquired distinctiveness/secondary meaning. So, it may be in the best interest for an applicant to consider amending to the Supplemental Register while the applicant for a trademark is growing the name recognition for the mark. However, as with many legal matters, it is a good idea to consult with an experienced attorney for more details and information on your specific matter.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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