Understanding the Principal and Supplemental Trademark Registers
The United States Patent and Trademark Office (USPTO) maintains two registers: the Principal Register and the Supplemental Register. Understanding the differences between these two registers is crucial for businesses seeking to protect their trademarks effectively.
Principal Register
The Principal Register is the primary register for trademarks that are considered distinctive. Trademarks on this register enjoy the highest level of protection and several significant benefits, including:
- Presumption of Validity: Registration on the Principal Register serves as prima facie evidence of the validity of the trademark, the registrant's ownership, and the exclusive right to use the mark nationwide in connection with the goods or services listed in the registration.
- Legal Advantages: Trademarks on the Principal Register can become incontestable after five years of continuous use, providing stronger protection against challenges.
- Enhanced Remedies: Owners of trademarks on the Principal Register can bring actions for trademark infringement in federal court and may be entitled to statutory damages and attorney's fees.
To qualify for the Principal Register, a trademark must be distinctive, meaning it is inherently unique or has acquired distinctiveness through extensive use in commerce.
Whenevery possible, registration on the Principal Register is superior to the supplemental Register. It provides broader and more comprehensive protection that the Supplemental Register.
Supplemental Register
The Supplemental Register is an alternative for trademarks that do not meet the distinctiveness criteria required for the Principal Register. While it offers fewer benefits, it still provides valuable protections, such as:
- Right to Use the ® Symbol: Trademarks on the Supplemental Register can use the ® symbol, indicating that the mark is registered with the USPTO.
- Blocking Confusingly Similar Marks: Registration on the Supplemental Register can prevent other parties from registering confusingly similar marks.
- Basis for Foreign Registration: Trademarks on the Supplemental Register can serve as a basis for seeking registration in certain foreign countries under the Madrid Protocol.
Marks on the Supplemental Register are typically descriptive or non-distinctive but may acquire distinctiveness over time through use in commerce. Intent-to-Use (ITU) applications are not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use.
When a mark is not eligible for the Principal Register because it is not distinctive, meaning it is descriptive, not functional, deceptively misdescriptive, or otherwise do not yet distinguish the source of an applicant's goods or services, registration on the Supplemental Register may be the best alternative.
Registration on the supplemental register offers certain benefits.
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Early Protection: Even if a trademark is not yet distinctive enough for the Principal Register, registration on the Supplemental Register still provides some level of protection. This can be crucial for businesses looking to establish their brand while they work towards achieving distinctiveness.
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Use of the ® Symbol: Trademarks on the Supplemental Register can use the ® symbol, which signals to others that the mark is registered with the USPTO. This can deter potential infringers and enhance the perceived legitimacy of the brand.
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Blocking Similar Marks: Registration on the Supplemental Register can prevent other parties from registering confusingly similar marks. This helps in maintaining a unique brand identity and reduces the risk of consumer confusion.
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Basis for Foreign Registration: A trademark on the Supplemental Register can serve as a basis for seeking registration in certain foreign countries under international agreements like the Madrid Protocol. This is beneficial for businesses looking to expand their brand globally.
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Path to Principal Register: Over time, a trademark on the Supplemental Register can acquire distinctiveness through extensive use in commerce. Once it becomes distinctive, the owner can apply to move the mark to the Principal Register, gaining the full benefits of that status.
By registering on the Supplemental Register, trademark owners can secure early protection and lay the groundwork for future, stronger trademark rights. If you need more detailed information or assistance with your trademark registration, feel free to reach out to our law firm.
For more detailed information on the Principal and Supplemental Registers, you can visit the following USPTO pages:
Understanding these differences can help you make informed trademark registration and protection decisions. If you have questions or need assistance with your trademark application, please get in touch with our law firm for expert guidance. Our phone number is (303) 665-9845.