There are two federal registries of trade marks in the United States, the “Principal Register” and the “Supplemental Register.” You do not need to register a mark on any federal register to use the mark. However, if you are able to register a mark, you gain significant rights to prevent others from using a mark that is the same as yours or similar to yours.
Of the two federal registries, the Principal Register confers greater benefits. A mark registered on the Principal Register grants to the owner the following:
- Incontestable status after five years of registration, which serves to eliminate most, though not all, arguments that the registrant does not have the exclusive right to use the mark;
- The right to use the ® symbol in connection with the mark, which may deter potential infringers;
- Increased odds of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
- The right to sue for infringement in federal courts;
- The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
- The ability to recover attorney’s fees in infringement actions; and
- The ability to have Customs and Border Patrol block the importation of goods bearing an infringing mark.
For marks denied registration on the Principal Register, registration on the Supplemental Register can still provide meaningful trademark protection, including:
- The right to use the ® symbol in connection with the mark, which may deter potential infringers;
- Increased odds of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
- The right to sue for infringement in federal courts;
- The ability to petition for registration on the Principal Register if the mark has become distinctive through extensive use, or if the mark has been used continuously for five years.
For the many marks that don’t meet the requirements for registration on the Principal Register, registration on the Supplemental Register provides more protection for the owner than mere use provides, and can pave the way for the mark to later be moved to the Principal Register (via ‘acquired distinctiveness’).
