What are the two registers available when registering a trademark in the U.S.? Which are the benefits and disadvantages when registering your trademark on the Supplemental vs. the Principal Trademark Registers? What aspects should a trademark owner consider before registering his trademark on one of the two registers? Discover the answers to these questions in the following article written by IP Attorney Daniel Gurfinkel and published in the INTA Bulletin May 2012 edition (issued by the International Trademark Association).
You can read the intro of the article below. The complete article can be downloaded below as a PDF (in English).
The U.S. Trademark Registers: Supplemental vs. Principal
by Daniel Gurfinkel
Dennemeyer & Associates, LLC
Chicago, Illinois, USA
The U.S. Trademark Act (Lanham Act) provides for two separate registers for the registration of trademarks with the U.S. Patent and Trademark office (UPTO). Most practitioners and trademark holders are largely familiar with the Principal Register; yet, many have never heard of the secondary register, known as the Supplemental Register. Since the enactment of the law in 1946, the Supplemental Register (Lanham Act Sections 23-28, 15 U.S.C. §§ 1091-1096) has afforded a place to register a mark that is inherently descriptive but that can potentially identify goods or services with a source.
The names of new magazines, which typically are descriptive of the contents of the magazine, are a good example of marks that are registered on the Supplemental Register. The anticipation is that when the magazine becomes better known, through circulation, the mark may be registered on the Principal Register on the basis of acquired distinctiveness.
Differences Between the Two U.S. Trademark Registers
The Principal Register is the site for the registration of marks that are distinctive, by virtue of either their unique characteristics or their long and exclusive use. Registration on the Principal Register provides the registrant with, among other things, the presumption of the validity of the mark, prima facie evidence of ownership of the mark and acknowledgment of its continuous and exclusive use. Further, there is a possibility, after five years of continuous, uninterrupted use from the date of registration... Download the PDF to continue reading.