The United States Patent and Trademark Office maintains two Registers for applicants seeking trademark registration. The first Register is the Principal Register. It is reserved for marks that are fanciful, arbitrary, or suggestive. These marks are distinctive and/or unique indicators of a single source of goods and/or services. A descriptive mark will only be permitted on the Principal Register if it has acquired secondary meaning (distinctiveness). The second Register is the Supplemental Register. Marks on the Supplemental Register are descriptive of the goods and/or services. These marks do not presently function as an indicator of a single source of goods and/or services. However, once the Mark becomes distinctive (thus acquires secondary meaning), it can be transferred to the Principal Register.
At the Law Offices of Joseph C. Messina, located in Mamaroneck, New York, we can help you apply to successfully have your Mark registered on the Principal Register and/or Supplemental Register. Our attorneys have extensive experience handling these applications and with helping people and companies protect their brands and business ventures. For more information about how we can help you, send us an e-mail to schedule a free consultation with a New York trademark attorney at our office or via teleconference.
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Under U.S. trademark law, the term "secondary meaning" is proof that a trademark or service mark has become distinctive as applied to the goods or services in commerce. This showing requires the trademark holder to establish that in the minds of the public, the primary significance of the mark is to identify the source of the product or service rather than the product or service itself. For example, though first names are not generally considered distinctive, BEN & JERRY'S® ice cream has become so well known that it has acquired secondary meaning and is entitled to trademark protection. Proving secondary meaning requires evidence of public recognition through use and exposure in the marketplace. Our lawyers understand what supporting proof is needed and how to present this information effectively.
What Are the Advantages of Filing Your Mark on the Principal Register?
Marks on the Principal Register are granted the full benefits of the U.S. trademark laws, while Marks on the Supplemental Register maintain partial benefits of the laws. Registration on the Principal Register allows the trademark holder the following benefits:
- Prima facie (accepted as correct until proven otherwise) evidence of the validity of the of the trademark registration, the registrant's ownership of the Mark, and the exclusive right to use the Mark in commerce
- Prima facie evidence of continued use since the filing date of the trademark application
- Incontestability after five years of continuous use in commerce
- Constructive notice of the registrant's claim of ownership of the trademark
- Nationwide priority for use in commerce (with limited exceptions)
- The right to sue in Federal Court regardless of diversity jurisdiction
- Statutory remedies, such as treble damages
- Ability to bar the importation of goods bearing infringing trademarks by depositing the registration with the Department of Customs
- The right to register your trademark abroad based upon your U.S. registration under the Paris Convention
- The right to use the registration symbol ®
What are the Benefits to Filing Your Mark on the Supplemental Register?
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following substantial advantages:
- The registrant may use the registration symbol ®
- The registration is protected against registration of a confusingly similar mark under the Trademark Act Section 2(d)
- The registrant may bring suit for infringement in Federal Court
- The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements
Once a Mark on the Supplemental Register acquires distinctiveness, the owner may file a new application to register the Mark on the Principal Register. Generally, five years of continuous use is required to re-register on the Principal Register. However, whether you register on the Principal Register or the Supplemental Register, the important step is to file an application with the United States Patent and Trademark Office and preserve your intellectual property rights. Once your application is filed, then the Examining Attorneys at the United States Patent and Trademark Office will assist you in protecting your rights as they will refuse any application that will cause a likelihood of confusion with your trademark application or registration.
Send us an e-mail or call our office to schedule a telephone conference or an office meeting, and we will assist you in the protection of your intellectual property rights.
