Posts Tagged ‘benefits’

The Difference Between the Principal Register and the Supplemental Register

Tuesday, January 14th, 2020

There are two separate and distinct federal trademark registers: the Principal Register and the Supplemental Register.

Fanciful, arbitrary, suggestive marks and marks that have become distinctive through exclusive and continuous use in commerce for more than five years are eligible for registration on the Principal Register.  Once a mark is on the Principal Register, it is afforded the full range of benefits and protections under the Lanham Act. A successfully registered mark is prima facie evidence of registrant’s ownership and exclusive nationwide right to use the registered mark in connection with the specified goods or services. 15 U.S.C. § 1057(b).  The registration provides constructive notice of a claim of ownership which means that an opposing litigant cannot raise a defense of good-faith adoption against a mark on the Principal Registration. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072.  Once a mark on the Principal Register has been in continuous use in commerce for five years, it may become incontestable and immune from certain attacks and defenses. 15 U.S.C. § 1065.  In a successful infringement action, the registrant may seek increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.  Finally, marks registered on the Principal Register can be used to stop the importation of infringing goods or services into the United States. 15 U.S.C. § 1124. There are additional benefits to registration on the Principal Register which are held in common with marks on the Supplemental Register.

The Supplemental Register is often an option for weak marks that can potentially identify goods or services from a particular source. These are the marks that are already in use in commerce and have been refused registration on the Principal Register because they are merely descriptive, deceptively misdescriptive, primarily geographically descriptive or primarily merely a surname. The Supplemental Register is preferential to merely continued common law use because it affords certain protections.  Marks on either the Principal Register or on the Supplemental Register may give notice of federal registration by using the encircled “R;” the registrants have the right to assert claims of infringement of a registered mark in federal court; the registration provides notice to those conducting clearance searches; the registration bars registration of subsequently filed confusingly similar marks and the registration may serve as the basis for foreign filing.

However, marks on the Supplemental Register do not enjoy a presumption of validity, ownership and exclusive right to use the mark, they may not be recorded with Customs to prevent importation of counterfeits and they may not become incontestable after five years of exclusive and continuous use.  After five years of exclusive and continuous use in commerce, a Supplemental Register registrant is eligible to file for registration of his/her mark on the Principal Register, only if the mark has acquired a secondary meaning. Only if the mark has become distinctive in connection with the goods or services will registration on the Principal Register be allowed.

When registration is not available on the Principal Register, trademark owners should explore the option of Supplemental Registration because it affords many advantages over common law use.



Benefits of a Federal Trademark Registration over Common Law Rights

Friday, January 3rd, 2020

So long as there is not a federal registration or pending federal application for a similar mark for similar goods or services when an owner uses his/her mark in commerce, he/she establishes common law rights in the geographic area of use, if he/she is the first user of the mark in that area. Common law rights give the owner exclusive rights to the mark in a specific geographic location. These rights do not protect the mark throughout the state, or nationally. Common law rights afford limited mark protection within the area of use. Under common law, an owner can send a cease and desist letter in an attempt to prevent infringement by a secondary user of the mark.  Common law trademark rights can be enforced in federal court under the Lanham Act or in state court under state statutes.

Though federal trademark registration is not required, it can enhance and extend the owner’s common law protections in many ways. First, federal registration of the mark gives the owner legal presumption of the exclusive rights to use the mark throughout the United States and its territories in connection with the goods or services identified in the registration. This is advantageous when the owner is attempting to police his/her mark in and out of court.

Second, because it is a federal registration, the mark is listed in the USPTO database. Others will see the owner’s mark in the database when conducting a search prior to filing their own. This can help to prevent others from using a mark that is too similar to the one already registered. It also puts secondary users on constructive notice of the registrant’s rights. Moreover, the USPTO uses the database when conducting its own searches during trademark examination and will cite the owner’s mark against a confusingly similar one in a later-filed application.

Third, a federal registration allows the owner the right to record his/her trademark with the U.S. Customs and Border Protection. The agency will then have the ability to use the trademark registration to help prevent others from importing infringing or counterfeit foreign goods.

Finally, a federal trademark registration means that the owner has the benefit of using the encircled “R” with his/her mark. The mark is usually added to the right side of the mark and indicates that the owner has federally registered the mark with the USPTO. The encircled “R” acts as actual public notice of the owner’s exclusive nationwide rights in the mark.

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