- Posted on: May 7 2018
Until you decided to apply for trademark protection, you probably weren’t aware that the federal government has two different trademark registries: The Principal Register and the Supplemental Register. Though both provide legal protections, which one would be best for your situation?
Why Register Your Trademark?
Even without registering your trademark, you do have some rights. If you are the first to do business under your trademark in your geographic area, you can prevent other businesses from using the same or a similar mark in the same area. You may also use the trademark sign (™) with your mark to put other people on notice of your ownership. However, if your trademark conflicts with a registered mark, you may be forced to relinquish or change it, even if you did not know the other mark existed. This is true even if the other user does not do business in your area.
When a trademark is registered on either the Principal or Supplemental Register, anyone else who has or wants to use a similar trademark is expected to know that someone else has a claim. In most cases, the first person to file for trademark protection is going to have the strongest claim even if there is a direct conflict. Just the fact that a trademark has been registered is often enough to discourage other people from using it even if they could claim ownership based on prior use, or from using a mark that might be considered too similar to the registered mark.
Entities that have trademarks on either register may use the registration mark (®) as a way of showing their trademark’s registered status. Trademarks on either federal register also may be entitled to protection under international laws.
The Principal Register
Marks that qualify for inclusion on the Principal Register receive the highest degree of legal protection if some other party tries to challenge or violate the registered mark. If your mark is listed on the Principal Register and another party tries to sue you to take away your mark, the burden would first be on the challenger to overcome some built-in protections in your favor called “presumptions.” For example, the court would not require you to prove that you are the owner of your trademark and that your trademark is valid; rather, the other party would have to prove that you are not the owner or that your trademark is not valid.
A trademark listed on the Principal Register for more than five years is also considered to have “incontestable” status. Though this status does not mean a trademark cannot ever be contested (contrary to its name), it does mean that the other side would have to show some very strong facts as to why the court should allow this trademark to be challenged.
For a mark to qualify for inclusion on the Principal Register it must be considered “distinctive.” A distinctive mark may be one that applies a common word to a type of good not normally associated with it (“Apple” for a brand of computer, “Dove” for a type of soap), a made-up word (“Kodak” for a brand of photography supplies, “Adidas” for a brand of shoes), or a word that suggests certain product qualities (“Coppertone” for a type of suntan lotion, “Mobil” for a chain of gas stations).
Other benefits of having a trademark on the Principal Register include:
- The power to ban the importation of infringing goods and have the U.S. Customs and Border Patrol confiscate them.
- The ability to bring lawsuits for infringement of your trademark in federal court.
- The right to ask for damages for violations of your trademark, including attorneys’ fees.
The Supplemental Register
If your mark is not considered distinctive, however, that does not mean you cannot file for a registered trademark. A mark that is not considered distinctive can still be placed on the Supplemental Register. Some examples of descriptive marks include marks that are simply descriptive or consist of ordinary words (“Best Foods”) or which contain personal names or place names (“Dan’s Diner,” “Montgomery Hotel”).
The Supplemental Register provides some of the same protections as the Principal Register:
- Your trademark will appear in trademark searches, so other people are much less likely to infringe it.
- You can still use the registered trademark symbol (®).
- You may be able to get trademark protections under international laws more easily than if your mark was unregistered.
The Supplemental Register, however, does not give your mark the same powerful presumptions of validity and ownership as the Principal Register. It also does not bestow “incontestability” status.
If your mark is on the Supplemental Register for five years and you can demonstrate that it has gained enough public familiarity to acquire a “secondary meaning,” it may qualify for the Principal Register. Think “McDonald’s” or “Denny’s.”
In conclusion, whether your trademark qualifies for the Principal or the Supplemental Register, increasing the legal protection of your mark is a worthwhile investment. After spending the money and time to develop and market your brand, it’s a good idea to defend it.