United States Trademark Registrations

1. United States Trademark Registrations Principal Register vs. Supplemental Register

2. Not All Registrations AreCreated Equal • The Lanham Act recognizes, and authorizes the USPTO to register eligible trademarks on, two separate and very different “registers”: • Trademarks placed on the Principal Register are called Principal Registrations • Trademarks placed on the Supplemental Register are called Supplemental Registrations • The Principal Register and the Supplemental Register separate strong marks from weak marks

3. The Principal Register • Strong marks are registered on the Principal Register and are fully capable of trademark significance at the time of registration. • Three categories of strong marks, in descending order of strength: • Fanciful Marks • “Coined” or invented terms • Arbitrary Marks • Ordinary, everyday terms that are appropriated for products having no relation whatsoever to the term • Suggestive Marks • Hint at, but do not describe, the product for which they are used • A weak mark that becomes strong: • Descriptive mark that has obtained secondary meaning

4. The Supplemental Register • Weak marks do not initially have trademark significance. If registrable at all, they are registered on the Supplemental Register. • There are two categories of weak “marks”: • Descriptive Marks • Descriptive of the goods or services for which they are proposed to be used and are registrable on the Supplemental Register • Generic Terms • Consist of words that are the common name for the products or services with which they are being used and are not registrable on the Principal or Supplemental Register under any circumstances

5. Benefits Common to Principal and Supplemental Registrations • Initial term of 10 years, renewable for successive 10-year periods • Double protection against subsequent registration of confusingly similar marks • first by USPTO internal examination • second by opposition/cancellation proceedings after publication • Right to use the official symbol “®” as notice of federal registration • Right to sue infringers in federal court and have federal law control key issues of validity, ownership, infringement, injunctions, and damages • Ability to obtain improved trademark protection in other countries under certain international treaties

6. Benefits Unique to thePrincipal Register • Constructive notice nationwide of: • The registrant’s claim of ownership of the registered mark • The registrant’s claim of priority of use of the mark; and • The registrant’s claim that the mark is effective from the filing date of the federal application (which can be earlier than the date of registrant’s actual first use in commerce) • Right to expand actual use nationwide where registrant previously used trademark only within a small region, subject to certain defenses • More “robust” registration with stronger trademark rights • Permits recordal with United States Customs Service to block importation of products/materials bearing infringing/counterfeit trademarks

7. Benefits Unique to thePrincipal Register • The registration creates an evidentiary presumption that the trademark is “distinctive” rather than “descriptive” • The registration is prima facie evidence that the: • Trademark is valid (i.e., eligible subject matter, complies with all legal requirements, operates as a trademark, not abandoned) • Registrant is the owner of the registered trademark • Registrant has the exclusive right to use the trademark nationwide Note: A registration can become conclusive evidence if the registrant makes the registration “incontestable” on or after the fifth anniversary of registration date, subject to certain defenses or defects

8. Why Supplemental Registration? • Allows marks that otherwise would not be federally protected to enjoy some of the benefits of federal trademark registration • Expedites the registration process through the efficiencies of a simpler internal USPTO examination process • Reduces the likelihood of time-consuming Office Actions • Eliminates the requirement that the application be published for opposition and the risk of facing opposition proceedings

9. Beware the Limitations The benefits unique to marks on the Principal Register are not afforded to Supplemental Registration. Limitations of Supplemental Registration are: • No constructive notice nationwide of the registrant’s claim of ownership of the registered mark • No constructive use (and priority of use) nationwide of the registered mark effective from the filing date of the federal application • No evidentiary presumptions

10. Beware the Limitations • No certainty of ability to expand actual use nationwide when registrant previously used trademark only within a small region • No recordal with United States Customs Service permitted • No availability of “incontestability” status • Weaker registration process

11. Movement between Principal and Supplemental Registers • Supplemental to Principal – • Required if a Supplemental Register application is clearly eligible for the Principal Register • Not permitted once a Supplemental Registration has been obtained even if mark becomes eligible for Principal Register • Principal to Supplemental – • Permitted BEFORE the Principal Register application becomes abandoned or has its rejection affirmed on appeal, PROVIDED that use of the mark in commerce has commenced as of the time of the amendment

12. The Bottom Line Supplemental Registration is a second-best alternative to Principal Registration BUT may be the only and therefore best alternative for some marks