How To Search For Marks With Acquired Distinctiveness or On the Supplemental Register Rights and Protection. A trademark registration on the Principal Register gives more rights than the Supplemental Register, 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 and a claim of acquired distinctiveness on the Principal Register gives more rights than a Supplemental Registration. BE FIRST TO FILE! Trying to stop someone from using an unregistered mark can be very difficult. Once registered, 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. Using a common law mark to oppose or cancel or sue users with conflicting marks one by one is very expensive. A lot of presumptive rights come with being FIRST TO FILE on the Principal Register. How do you know if a mark is registered on the Supplemental Register or has an Acquired Distinctivess claim? 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 or marks that have been registered with a claim of acquired distinctiveness. 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- |
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Comparison of Principal Register, Supplemental Register & Common Law Benefits of USPTO Trademark Registration |
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Trademark Right |
Principal Register |
Supplemental Register |
Common Law |
Bring infringement suit in federal court based on the federal registration |
yes |
yes |
no |
Can be used by the trademark examiner against future applications of confusing similar marks |
yes |
yes |
no |
Mark is easy to find for search reports |
yes |
yes |
no |
Owner can use ® to symbolize federal registration |
yes |
yes |
no |
Incontestability of mark after 5 years |
yes |
no |
no |
Statutory presumption of validity |
yes |
no |
no |
Statutory presumption of ownership |
yes |
no |
no |
Statutory presumption of distinctiveness or inherently distinctive |
yes |
no |
no |
Statutory presumption of exclusive right to use the mark in commerce |
yes |
no |
no |
Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
yes |
no |
no |
Ability to bring criminal charges against traffickers in counterfeits |
yes |
no |
no |
Use of the U.S. registration as a basis to obtain registration in foreign countries |
yes |
no |
no |
If your mark is already registered on the Supplemental Register and you believe that you have acquired distinctiveness, give us a call at 1- See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. |
Trademark E Search.com
A USPTO TESS search is a great first step toward avoiding refusals