FEDERAL TRADEMARK REGISTRATION ON THE PRINCIPAL REGISTER CAN BOOST YOUR RIGHTS

The list below compares the Trademark Principal Register, Supplemental Register and Common Law Rights. Principal Registration of a trademark gives the most rights because it takes the basics of trademark rights from common law and boosts it by adding features. (All the YES rows are the extra features.) Supplemental Registration is valuable as well, with a few less rights.

Common law rights are based on  being able to prove prior use, distinctiveness, ownership, using a trademark as a trademark, and other principles that have helped trademark owners to protect their trademarks (there are no presumptive rights). Federal registration of trademarks on the Principal Register takes all these common law rights and adds a few more benefits that were added by the statute (the Lanham Act), called statutory rights. Under common law, a trademark is ‘traditionally’ only protected in the geographical area where sales or marketing have actually occurred (“in trade” and “in commerce”). Federal registration spreads rights throughout the U.S. even if a registrant has only sold in a small geographical area.



Comparison of Principal Register, Supplemental Register & Common Law

Benefits of  USPTO Trademark Registration


Trademark Right

Principal Register

Supplemental Register

Common

Law

Bring infringement suit in federal court based on the federal registration

yes

yes

no

Can be used by the trademark examiner against future applications of confusing similar marks

yes

yes

no

Mark is easy to find for search reports

yes

yes

no

Owner can use ® to symbolize federal registration

yes

yes

no

Incontestability of mark after 5 years

yes

no

no

Statutory presumption of validity

yes

no

no

Statutory presumption of ownership

yes

no

no

Statutory presumption of distinctiveness or inherently distinctive

yes

no

no

Statutory presumption of exclusive right to use the mark in commerce

yes

no

no

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

yes


no

no

Ability to bring criminal charges against traffickers in counterfeits

yes

no

no

Use of the U.S. registration as a basis to obtain registration in foreign countries

yes

no

no


If your mark is already registered on the Supplemental Register and you believe that you have acquired distinctiveness, give us a call at 1-651-500-7590 and we will help you with a claim of acquired distinctiveness (affidavit) and new registration to prove and claim your increased rights available on the Principal Register. A new application and new opposition period is necessary, amendment from the Supplemental Register to the Principal Register is not permitted under Trademark Rules because Supplemental Registrations have no opposition period before registration. An opposition period is necessary for marks on the Principal Register to preserve the rights of those with grounds for opposition to a mark.


See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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Not Just Patents®

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Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us