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Trademark registration may seem like a simple process. But some technical aspects may stand in your way. We at Trademarkia want to remove these obstacles. So Here’s a little look into one such aspect — trademark registration on the principal and supplemental registers.
In the US, the Trademark Act of 1946 (the “Lanham Act”) governs the registration of trademarks. According to that, the United States Patent and Trademark Office (the “USPTO”) maintains two separate registers.
The USPTO examines every trademark application to determine if it should be granted registration. Marks are classified from least to most distinctive concerning their associated goods and services. The more distinctive or unique the mark, the more likely the registration will be granted.
Specifically, generic and descriptive names are difficult to register. Meanwhile, suggestive, arbitrary, and fanciful marks are approved more easily. And that’s where the registers come in.
When you register a trademark, it can be placed on either the Principal Register or the Supplemental Register. Both registers record registered marks in the trademark database. This gives the public notice of the trademark, thereby deterring others from adopting a confusingly similar trademark.
The Principal Register provides more expansive rights and broader protections. So, it’s typically what applicants want in a trademark registration. But, it’s reserved for trademarks that fall into the “suggestive, arbitrary, and fanciful” category.
For a mark to qualify for a registration on the Principal Register, it must meet several criteria:
1. The mark must be distinctive
To be considered distinctive, a mark must be considered at least one of the following:
2. The mark must be in actual use in commerce: To prove actual use, a business must put its trademark to use in commerce. It must apply it directly to its products or services.
It’s also possible to file based on “intent to use” if the trademark hasn’t been used in commerce yet. But a business must have the bona fide intent to market and use the mark in the future.
3. The mark cannot have legal conflict with another mark
4. The mark cannot be scandalous, immoral, or deceptive
Remember that an intent-to-use application won’t enter the Principal Register until it’s officially in use. To prove this, the applicant has to submit valid “proof of use” to the USPTO.
The Supplemental Register is for descriptive marks. These are marks that haven’t yet acquired distinctiveness or secondary meaning in the minds of consumers. This makes it a good alternative for marks that don’t meet all the requirements for the Principal Register registration.
The Supplemental Register offers less protection than the Principal Register. But it still provides benefits that wouldn’t exist without registration.
Registration of a trademark provides a layer of legal protection. But it’s up to each individual trademark owner to defend and enforce their rights.
Thus, a trademark registered on the Principal Register may not have to rely on common law rights in a trademark infringement lawsuit.
Instead, the trademark owner can present the certificate of registration. This is evidence of the validity, ownership, and exclusive right to use the trademark in commerce. The burden would then shift to the defendant to prove they’re not violating the trademark owner’s rights.
A mark on the Principal Register can also only be challenged on a limited basis during the first five years of registration. After five years of consecutive use, it can become incontestable. This means that the mark is then immune from any challenge.
In contrast, a mark registered on the Supplemental Register can be challenged at any time on any grounds. It can never achieve an incontestable status.
The trademark owner must present actual evidence in a lawsuit or trademark dispute. They’ll have to prove:
A registered mark may be used to prove exclusivity for up to five years.
There are some key differences between the two registers.
If an application doesn’t make it to the Principal Register, the applicant may still be allowed to amend the application for the Supplemental Register. On the other hand, an applicant who initially filed for the Supplemental Register will be denied by the USPTO unless the application is amended to the Principal Register.
But what if a mark initially registered on the Supplemental Register becomes distinctive later? It may then be moved to the Principal Register by filing a new application to the Principal Register.
Trademarks must achieve a certain level of distinctiveness before the USPTO registers it on the Principal Register. Though the Supplemental Register provides some benefits and protections, they’re not nearly as comprehensive as those on the Principal Register.
But then again, registering on the Supplemental Register at least establishes a federal registration, which is crucial for your mark.
You’ll need to look closely at your proposed mark to decide which register is right for it. We highly recommend hiring a trademark attorney for this. Their knowledge of trademark law will help you analyze your mark and application better. This will ensure your application process is smooth sailing and your mark ends up in the register you want it in!
A mark on the Supplemental Register won’t automatically move to the Principal Register. But, if a mark on the Supplemental Register is used regularly for five years, the owner can then apply for the mark to be on the Principal Register.
Yes, ®, the Circle R symbol for trademarks, can be used for marks registered on either the Principal Register or Supplemental Register.
Fanciful marks are the strongest category of distinctiveness for a trademark. These are unique marks invented only for that product, and that cannot be confused with others. These are considered to be the strongest type of mark.
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Amrusha is a versatile professional with over 12 years of experience in journalism, broadcast news production, and media consulting. Her impressive career includes collaborating extensively with prominent global enterprises. She garnered recognition for her exceptional work in producing acclaimed shows for Bloomberg, a renowned business news network. Notably, these shows have been incorporated into the esteemed curriculum of Harvard Business School. Amrusha's expertise also encompassed a 4-year tenure as a consultant at Omidyar Network, a leading global impact investing firm. In addition, she played a pivotal role in the launch and content strategy management of the startup Live History India.
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