Unlocking the Supplemental Register Trademark: Principal vs. Supplemental Register Explained
Are you ready to dive into the fascinating world of trademarks? Strap in, because today, we’re exploring the ins and outs of a lesser-known gem in the realm of intellectual property: the Supplemental Register trademark. Whether you’re a business owner, entrepreneur, or just curious about trademark law, understanding this unique register can provide you with valuable insights into protecting your brand. So, let’s get started!
The Supplemental Register is a secondary trademark register at the USPTO designed for marks that may lack immediate distinctiveness but could gain it over time. The Principal Register, on the other hand, is for trademarks with distinctive qualities.
Descriptive marks that describe an ingredient, quality, characteristic, function, feature, purpose, or use of specified goods or services are commonly filed on the Supplemental Register.
Trademarks on the Supplemental Register enjoy benefits such as the ability to use the ® symbol, protection in federal court, visibility in the USPTO database, and eligibility for international registration.
Yes, trademarks on the Supplemental Register must be lawfully used in commerce before they can be registered. Intent-to-use applicants are not eligible until they’ve filed an acceptable allegation of use.
Yes, under certain conditions. Marks that have been in use for five years or more might be eligible for the Principal Register if they can prove acquired distinctiveness, showcasing that the mark has become distinctive through use in commerce. Transitioning involves filing a new trademark application for the Principal Register. It’s important to understand the criteria and complexities involved in proving acquired distinctiveness for successful transition.
The “Five Years of Use” method demonstrates substantial and exclusive use of the mark in commerce for five years before claiming distinctiveness. However, this process can be complex and subject to specific regulations, often requiring consultation with a trademark attorney or professional.
The Two Registers at the USPTO
First things first, the United States Patent and Trademark Office (USPTO) operates two trademark registers: the Principal Register and the Supplemental Register.
The Principal Register
The Principal Register is the primary trademark register administered and maintained by the USPTO. This prestigious register is reserved for trademarks with distinctive qualities, offering trademark owners a host of advantages, including:
– Constructive Notice: Your claim of ownership is publicly known. This means you can use the registration symbol Ò. “You may only use the registration symbol with the trademark for the goods or services listed in the federal trademark registration.”
– Legal Presumption: You’re presumed to own the mark exclusively.
– Constructive Use Date: Your use is established as of the application filing date.
– Federal Court Action: You can bring trademark disputes to federal court.
– Customs Service Protection: Prevent importation of infringing foreign goods.
– Incontestable Status: Subject to statutory defenses, your mark can become incontestable.
– International Registration: Use your US registration as a basis for foreign registration.
– Amazon Brand Registry Eligibility: Qualify for the Amazon Brand Registry.
If you don’t specify a register in your application, the USPTO presumes that you seek registration on the Principal Register.
The Supplemental Register Trademark
Now, let’s talk about the Supplemental Register trademark. This is the USPTO’s secondary trademark register, designed for trademarks that may not be distinctive at first but could gain distinction over time. Certain marks not eligible for the Principal Register can find a home on the Supplemental Register.
TIP: A comprehensive trademark search will help you figure out if your trademark could end up on the Supplemental Register.
Descriptive Trademarks
What types of trademarks are typically filed on the Supplemental Register? Descriptive marks, that’s what! These marks describe “an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” Even if they don’t describe everything about a product, as long as they describe a significant aspect, they could qualify for the Supplemental Register.
Benefits of the Supplemental Register
Don’t be discouraged by the term ‘secondary’ – Supplemental Register trademarks enjoy several benefits, including:
– Use of ® Symbol: You can proudly display the registered trademark symbol.
– Federal Court Action: Just like on the Principal Register, you can protect your mark in federal court.
– USPTO Database: Your trademark is searchable on the USPTO database, discouraging potential infringers.
– International Registration: Use your US registration as a basis for foreign registration.
– Basis for Refusal: The USPTO may cite your trademark as a basis for refusing similar trademark registrations.
Use in Commerce Rules
One important caveat to consider is that trademarks on the Supplemental Register must be in lawful use in commerce before they can be registered. Intent-to-use applicants are not eligible until they’ve filed an acceptable allegation of use. When you make the move to the Supplemental Register after filing an acceptable allegation of use, the effective filing date is the date of that allegation.
Maintaining Your Supplemental Register Trademark
Trademark maintenance is key, whether on the Principal or Supplemental Register. The deadlines for maintaining your Supplemental Register trademark are as follows:
– Between the 5th and 6th years, file a Declaration of Use and/or Excusable Nonuse under section 8.
– Between the 9th and 10th years, file the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9.
– Every ten years thereafter, file subsequent Declarations of Use and/or Excusable Nonuse along with an Application for Renewal under sections 8 and 9.
However, there is a crucial difference to note. While trademarks on the Principal Register can attain incontestable status through Section 15, this provision is not available for trademarks on the Supplemental Register. Section 15 allows a registered mark to become incontestable after five years of continuous use, providing a powerful layer of protection.
Transitioning to the Principal Register?
If you’ve been rolling with a Supplemental Register trademark and feel it’s time to level up, you have options. Trademarks on the Principal Register can amend to the Supplemental Register, but the reverse isn’t possible. To file your trademark on the Principal Register, you’ll need to file a new trademark application.
A key point to remember is that if your trademark has been in use for five years or more, you may be eligible for the Principal Register, provided you can prove acquired distinctiveness. This means that your mark has become distinctive through your use in commerce.
One common method to prove acquired distinctiveness is “Five Years of Use.” This entails demonstrating substantial and exclusive use of your mark in commerce for five years before claiming distinctiveness. While this can be accepted as prima facie evidence in “appropriate cases,” the USPTO might require additional evidence based on the nature of your mark.
It’s important to understand that claiming acquired distinctiveness through Section 2(f) can be complex and is subject to specific regulations. For the best results, consult with a trademark attorney or professional to navigate the process effectively.
In Conclusion
In conclusion, the Supplemental Register trademark offers an attractive option for businesses with descriptive or nondistinctive marks that hope to gain distinction over time. Understanding the benefits and rules of this register can be crucial in protecting your brand and ensuring you meet all the necessary requirements. If the day comes when you decide to upgrade to the Principal Register, remember that with time and the right evidence, it’s a possibility.
So, whether you’re starting a new business or looking to protect your brand, the Supplemental Register trademark is a valuable tool in your intellectual property toolkit. Get familiar with the rules, make use of its benefits, and keep an eye on that clock for maintenance deadlines. Your brand deserves the best protection, and the Supplemental Register is here to help you achieve it!
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