If you are thinking about registering a trademark for your business, you may have heard of the term “principal register”. But what does it mean and why does it matter? In this blog post, we will explain what the principal register is, how it differs from the supplemental register, and what benefits it offers to trademark owners.
What is the Principal Register?
The principal register is the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). It is governed by Subchapter I of the Lanham Act. Having a mark registered under the principal register confers certain benefits on the holder of the mark.
To be listed on the principal register, a trademark must meet the following requirements:
- Be distinctive or have acquired distinctiveness. This means that the mark must be capable of identifying the source of the goods or services and distinguishing them from those of others. Distinctiveness can be inherent (for example, if the mark is fanciful, arbitrary, or suggestive) or acquired through use in commerce (for example, if the mark has become well-known or famous).
- It must go through a 30-day opposition period following publication. This means that the mark must be published in the Official Gazette of the USPTO and any third party can file an opposition to challenge the registration within 30 days. If no opposition is filed or the opposition is dismissed, the mark will proceed to registration.
- It must meet all other requirements for registration. This means that the mark must comply with the rules and regulations of the USPTO, such as the use of proper specimens, disclaimers, and declarations.
What is the Supplemental Register?
The supplemental register is a secondary register of trademarks maintained by the USPTO. It is governed by Subchapter II of the Lanham Act. Having a mark registered under the supplemental register provides some protection to the holder of the mark, but not as much as the principal register.
The supplemental register is mainly for marks that are descriptive, geographic, or otherwise not distinctive enough to qualify for the principal register. However, these marks may still be capable of functioning as trademarks if they have some degree of recognition or reputation in the market.
To be listed on the supplemental register, a trademark must meet the following requirements:
- Be capable of distinguishing the goods or services of the applicant from those of others. This means that the mark must not be generic, deceptive, or immoral.
- Be in use in commerce. This means that the mark must be actually used on or in connection with the goods or services in interstate or foreign commerce.
What are the Benefits of the Principal Register?
The principal register offers the most complete level of trademark protection under U.S. law. Some of the benefits of the principal register are:
- Nationwide legal protection. This means that the owner of the mark has the exclusive right to use the mark in connection with the goods or services identified in the registration throughout the United States. The owner can also prevent others from using confusingly similar marks that are likely to cause consumer confusion, mistake, or deception.
- Presumption of validity, ownership, and distinctiveness. The registration is prima facie evidence of the validity of the mark, the ownership of the mark by the registrant, and the distinctiveness of the mark. These presumptions can be very helpful in enforcing the mark against infringers or defending the mark against challenges.
- Constructive notice of ownership. The registration serves as constructive notice to the public of the registrant’s claim of ownership of the mark. This eliminates the defense of good faith or innocent use by infringers who claim that they did not know of the existence of the mark.
- Right to use the ® symbol. The mark can have the federal registration symbol ® next to it to indicate that the mark is registered on the principal register. This symbol can enhance the reputation and value of the mark and deter potential infringers.
- Right to sue in federal court. The owner of the mark can bring an action for trademark infringement, unfair competition, or dilution in federal court and seek remedies such as injunctions, damages, profits, attorney’s fees, and treble damages.
- Right to record the registration with the U.S. Customs and Border Protection. This means that the owner can record the registration with the U.S. Customs and Border Protection to prevent the importation of counterfeit or infringing goods that bear the mark or a similar mark.
- Right to apply for international protection. The owner can use the registration as a basis to apply for trademark protection in other countries that are members of the Madrid Protocol or other international treaties.
How Can The Trademark Place Help You?
If you are interested in registering your trademark on the principal register, you need the help of an experienced trademark attorney. The Trademark Place is a trademark law firm that specializes in helping clients obtain and protect their trademarks. We can assist you with the following services:
- Trademark search. We can conduct a comprehensive trademark search to determine the availability and registrability of your mark. We can also advise you on the best strategy to avoid potential conflicts or refusals.
- Trademark application. We can prepare and file your trademark application with the USPTO and handle all the correspondence and communication with the examining attorney. We can also respond to any office actions or oppositions that may arise during the registration process.
- Trademark maintenance. We can monitor and maintain your trademark registration and ensure that you comply with the post-registration requirements, such as filing declarations of use and renewals. We can also help you enforce your trademark rights against infringers or defend your trademark rights against challengers.
The Trademark Place is your one-stop shop for all your trademark needs. Contact us today for a free consultation and let us help you secure your trademark on the principal register.