A trademark is a trademark is a trademark, right? Not a chance. The Patent & Trademark Office is in charge of the trademarking process. When it approves a mark filing, it places the mark in one of two registers - the principal and the supplemental. Only one really has any value.
Principal Register
The principal register is by far the most important register with the PTO, the one you want to be classified in. The benefits include exclusive nationwide ownership of the mark; official notice to any would be users of your rights; the right to automatically defeat certain challenges if you keep continually using the mark for five years; certain benefits when prevailing in trademark infringement litigation.
How do you get into the principal register? The PTO makes the choice. The examining attorneys look at whether the mark is actually being used in the market, the mark is sufficiently distinct to reasonably operate as a product identifier in the consumer market; the is not conflict with a currently registered mark and the mark is not a single item work such as a book name.
Supplemental Register
The supplemental register is usually where marks that are technically acceptable, but not distinct are filed. The lack of distinctiveness is a critical weakness when considering a trademark infringement claim. If the PTO believes a court would not give the mark much weight, it will throw it into the supplemental register.
So, what use is this designation to the mark holder? There are really two benefits. The first is the mark still appears when people do a trademark search. Since the mark will be found, it will act as a prophylactic as the searchers will most likely choose an alternative mark.
The second benefit is the five year rule. If you continue to use the mark, you can argue after five years that it is now sufficiently distinct to be included in the principal register. The basis for this argument is the continual use for five years creates a higher level of distinctiveness given the mere fact it has been used during this time.
All and all, a filing with the supplemental register is not the end of the world. Still, getting included in the principal register is the goal.
Principal Register
The principal register is by far the most important register with the PTO, the one you want to be classified in. The benefits include exclusive nationwide ownership of the mark; official notice to any would be users of your rights; the right to automatically defeat certain challenges if you keep continually using the mark for five years; certain benefits when prevailing in trademark infringement litigation.
How do you get into the principal register? The PTO makes the choice. The examining attorneys look at whether the mark is actually being used in the market, the mark is sufficiently distinct to reasonably operate as a product identifier in the consumer market; the is not conflict with a currently registered mark and the mark is not a single item work such as a book name.
Supplemental Register
The supplemental register is usually where marks that are technically acceptable, but not distinct are filed. The lack of distinctiveness is a critical weakness when considering a trademark infringement claim. If the PTO believes a court would not give the mark much weight, it will throw it into the supplemental register.
So, what use is this designation to the mark holder? There are really two benefits. The first is the mark still appears when people do a trademark search. Since the mark will be found, it will act as a prophylactic as the searchers will most likely choose an alternative mark.
The second benefit is the five year rule. If you continue to use the mark, you can argue after five years that it is now sufficiently distinct to be included in the principal register. The basis for this argument is the continual use for five years creates a higher level of distinctiveness given the mere fact it has been used during this time.
All and all, a filing with the supplemental register is not the end of the world. Still, getting included in the principal register is the goal.
0 comments:
Post a Comment