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What is the trademark Register?

The Principal and Supplemental Trademark Registers

A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish your brand from your competitors.

A trademark:

  • Identifies the source of your goods or services.

  • Provides legal protection for your brand.

  • Helps you guard against counterfeiting and fraud.

Before a trademark is registered with the USPTO on the Principal Register, the applicant must demonstrate that the trademark is distinct. Marks that are inherently distinctive are registrable on the Principal Register. Descriptive marks (for example those that require a disclaimer or that have been refused for being descriptive) are usually relegated to the Supplemental Register.

The Principal Register

Trademarks on the Principal Register have nationwide priority over others in the US. This means that you can sue infringers who are using the mark anywhere in the United States in federal courts. Also, registration provides all trademark owners with a legal presumption that their mark is valid and that they exclusively own the mark nationwide in the US. In the event of a lawsuit, the court will automatically view you as the exclusive owner of a valid trademark. No further proof of validity or ownership is required. The burden will then shift to the defendant to challenge this, which is difficult, especially if the mark is highly distinct. A trademark owner is in a pretty good position upon registering a mark with the Principal Register.

In addition, by filing a Section 15 declaration after five years on the Principal Register, a mark can obtain “incontestable” status. Incontestability gives trademark owners even higher credibility in court, as registration is conclusive evidence that they exclusively own a valid trademark in the US. This means that your mark will be presumed valid unless a party can prove the following:

  • The mark consists of functional matter

  • Your client obtained trademark registration by fraud

  • The mark is abandoned

  • The mark is used to misrepresent the source of goods or services

  • The mark violates US antitrust laws

  • The mark is generic

Although there are some limitations, obtaining incontestability can deter others from filing a lawsuit against you. This is especially true for marks that could be argued to be descriptive, because no one can challenge a trademark owner’s registration on the grounds that it is descriptive once it has obtained incontestable status.

While both principal and supplemental trademarks can use ® with a mark, trademarks listed on the principal registry are afforded more rights than those on the supplemental registry. For example, principal registration grants owners the right to obtain statutory damages in cases involving a counterfeit mark and the right to register a mark with U.S. Customs to prevent the importation of goods that contain infringing marks.

The Supplemental Register

If your mark is rejected for registration on the Principal Register, registration with the Supplemental Register is still a good option. The Supplemental Register provides trademark owners with federal protection and benefits until they can prove that their mark has acquired distinctiveness and can register on the Principal Register. One advantage is the right to file for trademark infringement in federal court. In addition, by registering on the Supplemental Register, a trademark owner can also use ® with a mark. Using the registration symbol will make it easier for consumers to identify your mark, and consumers will perceive your mark as a trusted source. Moreover, a trademark owner can prevent a subsequent owner from registering a confusingly similar mark on either register. This may reserve your client’s spot on the Principal Register until the mark has acquired distinctiveness.

The disadvantage of filing for registration on the Supplemental Register is that there is no legal presumption of validity and ownership because a mark is presumed to be non-distinct on the Supplemental Register. In the event of a lawsuit, it will be necessary to prove that you exclusively own a valid trademark. This requires demonstrating to the court that consumers associate your mark with a business in the area where the infringing mark is used. The court will consider how long you have used the mark, how many sales you have made, how much was spent advertising, and whether the defendant intentionally infringed on the mark, among other factors. Overall, this can result in a very timely and costly litigation process, and why it’s always important to try to have a strong trademark.

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