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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) |
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Trademark Rights |
Principal Register |
Supplemental Register |
Common Law |
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Bring infringement suit in federal court based on the federal registration |
YES |
YES |
NO |
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The owner of a USPTO registration is entitled to rely upon the USPTO's fulfillment of its statutory duty to refuse registration to marks confusingly similar to a prior registrant's mark (USA Warriors Ice Hockey Program, Inc., 122 U.S.P.Q.2d 1790, (TTAB 2017)) |
YES |
YES |
NO |
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Mark is easy to find for search reports |
YES |
YES |
NO |
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Owner can use ® to symbolize federal registration |
YES |
YES |
NO |
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Incontestability of mark after 5 years |
YES |
NO |
NO |
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Statutory presumption of validity |
YES |
NO |
NO |
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Statutory presumption of ownership |
YES |
NO |
NO |
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Statutory presumption of distinctiveness or inherently distinctive |
YES |
NO |
NO |
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Statutory presumption of exclusive right to use the mark in commerce |
YES |
NO |
NO |
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Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
YES |
NO |
NO |
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Ability to bring federal criminal charges against traffickers in counterfeits |
YES |
NO |
NO |
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Use of the U.S. registration as a basis to obtain registration in foreign countries |
YES |
NO |
NO |
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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- |
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