Comparison of Principal Register and Supplemental Register

For USPTO Trademark Registration

Advantages of Federal Registration

(common law trademarks have none of these advantages)

Principal Register

Supplemental Register

Bring infringement suit in federal court based on the federal registration

yes

yes

Can be used against future applications of confusing similar marks

yes

yes

Mark is easy to find for search reports

yes

yes

Owner can use ® to symbolize federal registration

yes

yes

Incontestability of mark after 5 years

yes

no

Statutory presumption of validity

yes

no

Statutory presumption of ownership

yes

no

Statutory presumption of distinctiveness or inherently distinctive

yes

no

Statutory presumption of exclusive right to use the mark in commerce

yes

no

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

Yes

no

Ability to bring criminal charges against traffickers in counterfeits

Yes

no

Use of the U.S. registration as a basis to obtain registration in foreign countries

Yes

no


PLAN FOR A SUCCESSFUL, STRONG [TRADEMARKED] BRAND NAME

To verify a potential brand name is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a brand name, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


Call us at (651) 500-7590 for a Strong Brand Name. A Strong Brand Name is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.


Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590

WP@NJP.legal


StepsToABrand.com


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

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

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us