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When you file a trademark application with the United States Patent and Trademark Office (USPTO), it is crucial to understand that there are two registers upon which your trademark can appear. Under the Lanham Act, a trademark may be registered on the principal register or the supplemental register.
Critically, there are several significant benefits to registering on the principal register, which is generally the preferred option for trademark owners. But it’s essential to be aware that the supplemental register can provide an owner with protection before their mark has acquired the distinctiveness necessary to register on the principal register.
The principal register is reserved for trademarks that are unique and distinctive. Once your mark is on this register, you are legally presumed to be the trademark owner in all 50 states. If litigation is commenced regarding ownership of the mark, the other party would be required to rebut that presumption. In other words, the principal register offers the strongest protections for a trademark owner.
Specifically, when a trademark is registered on the principal register:
Additionally, a trademark filed on the principal register can become incontestable after five years following the filing of a Section 15 declaration. This provides the trademark holder with greater credibility in court in the event that ownership of the mark is disputed. In such cases, a mark would be considered valid unless it is generic, has been abandoned, misrepresents the source of the goods or services, or the mark was procured by fraud.
The supplemental register is an alternative to the principal register. It offers a number of protections when registration on the principal register is not available. Importantly, if a trademark has not yet acquired “distinctiveness,” it can still be shielded from wrongdoers on the supplemental trademark register. The more descriptive a trademark is, the more likely it will be registered on the supplemental register, as opposed to the principal register.
Unlike a mark on the principal register, a Madrid Protocol application cannot be based on a supplemental register trademark. There is also no “intent-to-use” filing basis for supplemental applications — the mark must have been used in commerce.
Although the protections aren’t as strong and there is no legal presumption of federal ownership on the supplemental register, you are still entitled to use the circled “R” registered trademark symbol to indicate the status of your mark. Notably, the USPTO will deny any applications for identical or similar marks.
If no register is specified on a trademark application, the USPTO will presume that registration is sought on the principal register. A mark that is registrable on the principal register cannot be registered on the supplemental register. However, if an application is filed requesting the mark appear on the principal register, and the examining attorney finds it does not qualify, an office action may be issued. In such cases, the examiner may provide the option to amend the application to register the trademark on the supplemental register.
A good example of a mark that would appear on the supplemental register is a product name that uses a phrase describing the physical qualities of the goods. If the mark can transcend the issue of being “merely descriptive” and ultimately become sufficiently distinctive, this secondary register may be a viable option to secure protective rights. In addition, the USPTO recognizes that over time, a trademark on the supplemental register may become an indicator of source.
Should a mark on the supplemental register acquire “distinctiveness” over a five-year period of continued use, it may be registrable on the principal register. Evidence of notoriety, extensive marketing campaigns, and consumer declarations concerning brand association are a few ways in which a mark can acquire distinctiveness or gain a secondary meaning in the market. SIgnificantly, a trademark cannot simply shift from one register to the other — an entirely new trademark application will need to be filed seeking registration on the principal register.
There are many nuances involved with registering a trademark with the USPTO. It’s best to have a knowledgeable trademark attorney on your side who can help you navigate the process. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs with all aspects of the trademark registration and application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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