Trademarks: Not All Trademarks Qualify

Principal Register, Incontestable Marks, Supplemental Register


Trademarks are generally thought to be listed on the Trademark Office’s Principal Register, but not all trademarks qualify. For this reason, certain types of marks are listed on the Trademark Office’s Supplemental Register.

The Principal Register

When talking about registered trademarks, we are assuming that they have been registered with the Principal Register of the Patent and Trademark Office.

Trademarks listed on the Principal Register are afforded maximum protection under U.S. law. Among the advantages one obtains by having a mark listed on the Principal Register are the presumptions that the mark’s registration is valid and that it has been in continuous use since the filing date.

The significance of being the beneficiary of a presumption that one’s trademark is valid is that you, as the owner, would not initially have the burden to prove up the validity of your mark in a dispute with a party challenging its enforceability.

Rather, it would be the party challenging your mark who would first have to advance evidence that your mark’s registration was invalid. Such presumptions afford owners of trademarks significant advantages when defending their marks against interlopers.

Among other benefits accorded owners for having their marks listed on the Principal Register are that a trademark owner can sue for statutory and treble damages as well as register their marks with the U.S. Customs Service, which is charged with making sure that trademarks are not being used illegally in connection with the importation of counterfeit goods.

Incontestable Marks

Trademarks listed on the Principal Register, and in continuous use for at least five years, may also benefit from qualifying as “incontestable” marks. Incontestable marks are accorded heightened rights of protection beyond those normally accorded marks listed on the Principal Register.

The most important advantage of owning an “incontestable” mark is that the validity of a mark and its registration, and provenance of ownership, are deemed conclusive and so unrebuttable.

Likewise deemed conclusive is the owner’s exclusive right to use the mark with respect to the specific goods and services expressly falling within its coverage.

Thus, in a dispute with an infringer, the owner of an incontestable mark does not have to present any evidence proving up the bonafides of its ownership, the validity of its registration, or that the mark has been used in conjunction with the proper class of good or services. Such features represented in trademark filings would be considered beyond challenge.

The Supplemental Register

Unfortunately, not all marks qualify to be listed on the Principal Register. Among the types of marks that cannot qualify are, so called, “descriptive marks.”

Descriptive marks are marks that describe a good or service. Examples are “Car Wash”; “Cool Whip”; “Cold Stone”; “Cool and Creamy,” i.e. marks that describe a characteristic of the good or service that is being offered for sale. Even so, over time, some descriptive marks may acquire secondary meaning, whereby customers begin to identify the descriptive mark more particularly with the owner of that mark.

For example, “Best Buy” is a descriptive mark, which, over time, has acquired secondary meaning in associating certain discount goods and services with the company– “Best Buy”. The same can be said for such marks as “Cold Stone,” which is now a mark identified with a national Ice Cream retail chain.

So even though a descriptive mark may not initially qualify to be listed on the Principal Register, overtime, as customers begin to associate it with the goods or services of a particular owner, this may be possible.

In the meantime, owners foreclosed from having their trademarks listed on the Principal Register may qualify to have them listed with the “Supplemental Register.”

Although a trademark listed on the Supplemental Register is not accorded the full range of protections that would otherwise be accorded a trademark listed on the Principal Register, i.e. trademarks listed on the Supplemental

Register would not benefit from the legal presumptions of validity of registration and ownership, they still benefit from far greater protections than trademarks not registered at all.

Among the rights accorded owners of trademarks listed on the Supplemental Register are the following:

  • The right to sue in Federal Court;
  • The right to use the ® symbol, which notifies the public that a trademark is registered;
  • The right to use the listing on the Supplemental Register as the basis for filing a registration in a foreign country;
  • The right to sue other owners of trademarks under Federal law for fielding marks confusingly similar to that of the mark listed on the Supplemental Register;
  • The right, after a mark has been listed on the Supplementary Register for a continuous period of five years, to reapply for the mark to be listed on the Principal Register.

The Takeaway

Owners of trademarks, such as descriptive marks that may not immediately qualify to be listed with the Trademark Office’s Principal Register, should consider listing their marks on the Supplemental Register.

While marks listed on the Supplemental Register do not enjoy the full panoply of protections accorded to marks listed on the Principal Register, they, nonetheless, would obtain significantly more protection than unregistered marks.

Related articles:

Small Business Owner’s Quick Guide to Conducting a Trademark Search 

What is a Trademark Anyway?

As a Small Business Owner You’re Thinking: Why Bother with Filing a Trademark?

Robert Goodman
Robert Goodman
Robert Ian Goodman, Esq. represents clients worldwide in the areas of complex commercial immigration and international and domestic commercial law. Mr. Goodman also provides general counsel services to entrepreneurs and start-up businesses and counsels foreign businesses interested in establishing a presence in the U.S. marketplace and U.S. businesses interested in expanding abroad. He also counsels law firms on Immigration and Commercial Law matters. Mr. Goodman is principal of Goodman Law and Goodman Immigration. He is also Special Counsel to Lawtelier LLP, based in New York City and Milan, Italy.

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