The issue of Supplemental Register vs. Principal Register frequently arises during the US trademark registration process. If you’ve read my article titled “What is the Supplemental Register for US Trademarks?,” you already know that the United States Patent and Trademark Office (USPTO) maintains two separate trademark registers. To recap, the Principal Register is reserved for trademarks that are considered under the law to be “distinctive.” In contrast, the Supplemental Register is for non-distinctive marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. I encourage you to read my previous article regarding the Supplemental Register so that you better understand the information presented here.
An Amendment to Allege Use is a sworn declaration filed with the United States Patent and Trademark Office (USPTO) indicating that your trademark is currently in use in commerce in connection with all of the products/services recited in your trademark application. The Amendment to Allege Use requires you to (1) set forth the date on which your mark was first used anywhere in the United States, (2) set forth the date on which your mark was first used in interstate commerce, and (3) submit a proper specimen showing actual use of your mark. If you filed your application on an intent to use basis, then you will eventually need to demonstrate actual use of your trademark by filing either an Amendment to Allege Use or the Statement of Use.
The Supplemental Register is provided by the United States Patent and Trademark Office (USPTO) as a way to federally register certain types of US trademarks. Although it doesn’t offer all of the benefits and protections of the Principal Register, it’s still a valuable tool that should be utilized under appropriate circumstances.
The USPTO maintains two separate trademark registers. The Principal Register is reserved for trademarks that are considered “distinctive.” On the other hand, the Supplemental Register is for trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers.
Proof of use for trademark registration is something that’s often misunderstood by people who choose to file their own trademark applications. It’s not uncommon for people to contact me after receiving a trademark office action from the United States Patent and Trademark Office (USPTO) indicating that registration of their trademark is being refused because the examples of use they submitted (referred to as “specimens”) are insufficient or improper. This causes significant delays in registering their trademark and, in some cases, can even lead to their trademark application going abandoned and having to start the trademark registration process all over again.
One of the questions I hear most as a trademark attorney is “What is use in commerce?” The concept of “use in commerce” is vitally important in US trademark law, especially with regard to federal trademark registration. Needless to say, the “use in commerce” definition is something all trademark applicants should be aware of.
Trademark are extremely valuable forms of intellectual property and even more important business assets. Trademark owners must establish their legal right to their marks in order to properly safeguard them from possible infringement. To obtain the maximum protection available under the law, trademark owners should strongly consider obtaining a USPTO trademark registration issued by the United States Patent and Trademark Office (USPTO).
What are the Benefits of USPTO Trademark Registration?
Below are the main benefits of registering your trademark with the USPTO:
- A Certificate of Registration issued by the USPTO is prima facie evidence of (1) the validity of the registered trademark, (2) ownership of the registered trademark, and (3) the nationwide exclusive right to use the registered trademark in commerce in connection with the goods/services listed in the Certificate of Registration. This is invaluable should you ever have to pursue or defend a trademark infringement lawsuit.
If you’re going to engage in a commercial enterprise, you’ll likely spend a great deal of time, money, and resources creating and developing your unique brands (i.e. your trademarks). After all, your unique brands are what allow you to build consumer loyalty and, in turn, grow and prosper.
Your brands are some of the most valuable assets you’ll ever own because they embody your reputation and symbolize the goodwill your business has with the purchasing public. And because they’re so valuable, they need to be protected against competitors who may try to imitate or disparage them. As such, if you haven’t yet sought protection for your brands by filing a trademark application with the United States Patent and Trademark Office (USPTO), then I strongly encourage you to consider doing so.
If you’ve ever attempted to register a trademark, you already know that the USPTO trademark application form requires you to identify the trademark class into which your product or service falls. Most people look at the portion of the form that asks for the class and, not surprisingly, have no idea what that even means. Well, the good news is that the classification system is not really all that difficult to understand once you know how to navigate it.
Most people already know that it’s possible to trademark a logo with the United States Patent and Trademark Office (just as it’s possible to trademark a product name). But, applying to register a logo as a trademark is quite different than simply registering a name or a slogan. In my experience, people who file their own US trademark application tend to make the most (and costliest) mistakes when they attempt to register their logos. Of course, this often leads to the expenditure of additional time and money that would have been completely unnecessary if the application was properly prepared in the first place. Although this is certainly not a comprehensive list of all the things you need to know to successfully trademark a logo, here are a few hints that will help you avoid making some common mistakes.
People ask me all the time if it’s possible to trademark a product name. The answer is….sometimes. Some categories of product names are eligible for federal trademark registration with the United States Patent and Trademark Office (USPTO), while others are not. In general, the more unique and creative your product name is, the easier it will be to register it as a trademark and the greater scope of protection it will receive.