Should I consider an amendment to the Supplemental Register if I have been refused on the Principal Register? Rights and Protection. A Principal Registration give the most rights, which may be especially important if you dealing with a good or goods that may be subject to counterfeiting. Only trademarks on the Principal Register may be recorded with U.S. Customs for protection. A Principal Registration also carries a lot of important presumptions under the law if you ever have to defend it. Amazon Brand Registry will only protect marks on the Principal Register. A registration on the Supplemental Register may be viewed as a weak mark and may be subject to less protection under the law. But a Supplemental Registration may be better than no registration at all and can lead to better things. Trying to stop someone from using an unregistered mark can be very difficult. A registered mark can be used against conflicting marks over and over by trademark examiners to stop the registration of new marks with a likelihood of confusion. Opposing or Cancelling or suing users with conflicting marks one by one is very expensive. A lot of presumptive rights come with a Principal Registration. The answer to this question to amend depends on the facts. A new application, done a different way, may be the ultimate answer. Call us for help at 1- How do you know if a mark is registered on the Supplemental Register? On a TESS trademark search record, the Register field appears near the bottom of the record, in this example the REGISTER is shown in RED: Word Mark [TRADEMARK is here] Goods and Services Standard Characters Mark Drawing Code Serial Number Filing Date Current Basis Original Filing Basis Owner (APPLICANT) Disclaimer Type of Mark Register [PRINCIPAL or SUPPLEMENTAL] Live/Dead Indicator How do I search the Supplemental Register? On the Trademark Electronic Search System (TESS) at http://tess2.uspto.gov, a user can search on the Structured or Free Form search to find marks on the Supplemental Register. The field Register on the Structured search or [RG] on the Free Form Search identifies this field. This field identifies the mark as being either on the Principal Register (PRINCIPAL), the Principal Register with a Section 2(f) claim of acquired distinctiveness in part or in whole (PRINCIPAL- For a Free Form search or Structured search: The search PRINCIPAL[RG] retrieves only occurrences of PRINCIPAL. The search PRINCIPAL- Comparison of Principal Register and Supplemental Register For USPTO Trademark Registration |
|||
Trademark Rights |
Principal Register |
Supplemental Register |
Common Law |
Bring infringement suit in federal court based on the federal registration |
YES |
YES |
NO |
Can be used by 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 federal 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- See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. |
MerelyDescriptive.com
Trademark application
help