In the United States there are two different trademark registers: The Principal Register and the Supplemental Register. The Principal Register is the main register and provides the best protection. Registration on the Principal Register entitles the Registrant to:
- Listing of the mark in the USPTO’s online database
- Priority over subsequently filed trademark applications with the USPTO
- The right to use the “®” symbol
- Prima facie evidence of the registrant’s exclusive right to use the mark in the United States
- A presumption that the registrant is the true owner of the trademark.
- The right to sue in federal court if the trademark is infringed upon.
- The possibility of incontestability after five years of registration.
- The right to record the trademark with the U.S. Customs and Border Protection to stop the importation infringing or counterfeit goods into the United States.
The Supplemental Register also affords a trademark registrant many of these protections including:
- Listing of the trademark in the USPTO’s online database
- Priority over subsequently filed trademark applications with the USPTO
- The right to use the “®” symbol
- The right to sue in federal court if the trademark is infringed upon.
In most cases an applicant will apply for registration on the Principal Register and for a variety of reasons the application may be refused by the USPTO. If the refusal is due the descriptive nature of the trademark, geographic terms contained in the mark, or if the mark is a name the examining attorney at the USPTO may allow for amendment of the application for registration on the Supplemental Register so long as the trademark is currently being used in commerce.
The Supplemental Register is a great option for trademarks that may be difficult or impossible to register on the Principal Register at the time of application. A key benefit of the Supplemental Register is that the USPTO will consider the trademark against later applications that are confusingly similar. This allows the supplemental registration of the mark to essentially act as a place holder while the trademark acquires the requisite amount of distinctiveness necessary for registration on the Principal Register.
If you have questions about applying for a trademark contact us for a free phone consultation.
