|
What are the Differences between Principal Registration, Supplemental Registration and Common Law? 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 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, even a Supplemental Registration can be used
by a trademark examiner to refuse later- Trying to stop someone from using your unregistered mark can be very difficult, unregistered marks are very difficult to enforce. 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. How do you know if a mark is registered on the Supplemental Register? 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- Note: Trademarks that are registered under Section 2(f) (or - Comparison of Principal Register, Supplemental Register, and Common Law Trademark Rights (Advantages of Federal 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 |
|
PLAN FOR A DISTINCTIVE, SUCCESSFUL, STRONG FEDERALLY REGISTERED TRADEMARK To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps: 1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions), 2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others) 3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted) 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.) 5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.) *We don’t stop here but this is a good start! Call us at (651) 500- Not Just Patents ® is a registered trademark of Not Just Patents LLC with a USPTO
Federal Trademark Registration (R/N 3556868- |
|||
Search Not Just Patents® sites:
Aim Higher SM
Not Just Patents®
©2008-
Call: 1-