To be eligible for registration on the Principal Register, certain marks, such as descriptive marks, surnames, geographic terms and certain types of trade dress, must acquire “secondary meaning.” “Secondary meaning” means that public primarily sees the mark as identifying the source of the product rather than the product itself. Registration on the Principal Register gives a mark’s owner several benefits, including:
- Presumptions of ownership and validity;
- Constructive notice to others of ownership;
- The right to request that U.S. Customs exclude infringing goods from import;
- The ability to claim “incontestable” status after five years of registration; and
- The ability to obtain certain monetary and equitable relief in an infringement action.
Marks that are actually in use in the United States, but that do not qualify for the Principal Register because they have not yet acquired secondary meaning, may be registered on the Supplemental Register. As you might expect, registration on the Supplemental Register does not provide the same protection as registration on the Principal Register. For example, registration on the Supplemental Register does not create a presumption of ownership or validity; give others constructive notice of ownership; support a later claim of incontestability; imply an exclusive right to use the mark; or allow the mark’s owner to request that products bearing the mark be excluded from import into the United States.
So why bother with the Supplemental Register? The primary benefit of a registration on the Supplemental Register is that a subsequent application for a confusingly similar mark for related goods may be refused by the USPTO. The owner of a Supplemental Registration may also use the registered ® symbol on the products listed in the registration. Further, a registration on the Supplemental Register allows the owner to register the mark in other countries that offer reciprocal trademark rights. And, in the event that a Supplemental Registration’s owner is successful in an infringement action, the owner may be entitled to certain monetary and equitable relief that might otherwise be unavailable.
Given the relative advantages of ownership of a registration on the Principal Register, an applicant should always seek registration on the Principal Register first. But, if the USPTO refuses registration for lack of secondary meaning, an applicant should consider amending the application to the Supplemental Register to ensure the protections discussed above. Keep in mind that if a mark’s owner believes that the mark registered on the Supplemental Register has acquired distinctiveness, a new application for registration on the Principal Register is required.
Conkle, Kremer & Engel assists companies in all aspects of intellectual property protection, including U.S. and international trademark registrations and enforcement of trademark rights.