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-2(F)-IN PART, PRINCIPAL-2(F), or the Supplemental Register (SUPPLEMENTAL).

For a Free Form search or Structured search: The search PRINCIPAL[RG] retrieves only occurrences of PRINCIPAL. The search PRINCIPAL-2[RG] AND PART[RG] retrieves only occurrences of PRINCIPAL-2(F)-IN PART. The search PRINCIPAL-2[RG] NOT PART[RG] retrieves only occurrences of PRINCIPAL-2(F). The search SUPPLEMENTAL[RG] retrieves only occurrences of (d) SUPPLEMENTAL. This field applies only to Registered marks.




Comparison of Principal Register, Supplemental Register & Common Law

Benefits of  USPTO Trademark Registration


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 1-651-500-7590 and we will help you with a claim of acquired distinctiveness (affidavit) and new registration to prove and claim your increased rights available on the Principal Register. A new application and new opposition period is necessary, amendment from the Supplemental Register to the Principal Register is not permitted under Trademark Rules because Supplemental Registrations have no opposition period before registration. An opposition period is necessary for marks on the Principal Register to preserve the rights of those with grounds for opposition to a mark.


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


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TMk® Email W@TMK.law for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO Trademark Search   TEAS Application TEAS Plus  Where to trademark search?  TmSearch.US.com

Trademark e Search  New USPTO Trademark Searching  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Phonetic Equivalent Examples  Website specimens

Trademark ID manual

Phonetic Equivalents New Search

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard   

Amend to Supplemental Register?    Knockout Searching

General Rules Likelihood of Confusion   Dominant Elements

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a Trademark Specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

Make Trademark Searching More Thorough

   

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Avoid Likelihood of Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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