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Principal Registration v. Supplemental Registration v. Common Law Which Gives the Most Rights? Principal Register The chart below compares the Trademark Principal Register, Supplemental Register and Common Law Rights. Principal Registration of a trademark gives the most rights because it takes the basics of trademark rights from common law and boosts it by adding features. (All the YES rows are the extra features.) Supplemental Registration is valuable as well, with a few less rights. Common law rights are based on being able to prove prior use, distinctiveness, ownership, using a trademark as a trademark, and other principles that have helped trademark owners to protect their trademarks (there are no presumptive rights). Federal registration of trademarks on the Principal Register takes all these common law rights and adds a few more benefits that were added by the statute (the Lanham Act), called statutory rights. Under common law, a trademark is ‘traditionally’ only protected in the geographical area where sales or marketing have actually occurred (“in trade” and “in commerce”). Federal registration spreads rights throughout the U.S. even if a registrant has only sold in a small geographical area. |
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Comparison of Principal Register, Supplemental Register & Common Law Benefits of USPTO Trademark Registration |
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Trademark Right |
Principal Register |
Supplemental Register |
Common Law |
|
Bring infringement suit in federal court based on the federal registration |
yes |
yes |
no |
|
Can be used by the trademark examiner against future applications of confusing similar marks |
yes |
yes |
no |
|
Mark is easy to find for search reports |
yes |
yes |
no |
|
Owner can use ® to symbolize federal registration |
yes |
yes |
no |
|
Incontestability of mark after 5 years |
yes |
no |
no |
|
Statutory presumption of validity |
yes |
no |
no |
|
Statutory presumption of ownership |
yes |
no |
no |
|
Statutory presumption of distinctiveness or inherently distinctive |
yes |
no |
no |
|
Statutory presumption of exclusive right to use the mark in commerce |
yes |
no |
no |
|
Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
yes |
no |
no |
|
Ability to bring criminal charges against traffickers in counterfeits |
yes |
no |
no |
|
Use of the U.S. registration as a basis to obtain registration in foreign countries |
yes |
no |
no |
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If your mark is already registered on the Supplemental Register and you believe that
you have acquired distinctiveness, give us a call at 1- See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. |
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