Trademark Applications: The Principal Register
While it’s not technically necessary to file a trademark application with the USPTO in order to protect your company’s trademark, a successful filing in the Principal Register does generate a plethora of benefits. Chief among them is the ability to sue in federal court. Unfortunately, having your application accepted into the Principal Register is far from guaranteed.
When you file a trademark registration, you must determine if you are filing for the Principal Register or the Supplemental Register. The Principal Register has more benefits, is much more difficult to be accepted into, and is the default choice if you do not specifically designate which register you are applying for your mark.
The Principal Register is a record of government approved (USPTO approved) marks that are inherently distinctive or have acquired sufficient secondary meaning (as defined below). A company whose mark has been accepted to the Principal Register has expanded power to prevent others from using their mark, power to prevent the importing into the United States of counterfeit goods containing the mark, the ability to collect attorney’s fees and other substantial penalties in a trademark infringement lawsuit, and the ability (five years after registration) for the mark to be “incontestable.”
On the other hand, marks that have only attained the Supplemental Register may be cancelled at any time by a court, and companies suing for trademark infringement will likely not able to win attorney’s fees in their lawsuit. For U.S. companies and American citizens, the primary reason /advantage to the Supplemental Register is that it makes them eligible to apply for trademark registration in many other countries that have intellectual property treaties with the United States.
There are a few key factors used by the USPTO to determine whether or not a mark will be awarded the status of Principal Register. In addition to the information in these documents, Web Defense Systems can take steps to help our clients determine whether or not an application will be accepted by the USPTO. The foremost factor is the most obvious one: whether or not the mark is already being used by other companies in the same industry. This “likelihood of confusion” would dramatically decrease the chances that your trademark is placed in the Principal Register. However, another very important factor is whether or not a company has publicized their mark enough to make the trademark synonymous with the company. In other words, has the trademark developed a “secondary meaning” in the marketplace? In trademark law, a secondary meaning implies that consumers are widely aware that the trademark is associated solely with the applicant. If such can be proven, it is more likely a Principal Register will be granted. As a result, if a company files an application for trademark and can show that it has used the mark in large quantities of high profile advertising, marketing, and sales, the company is more likely to be placed in the Principal Register. In other words, size matters.
Three side notes:
- Many applications are initially rejected on the grounds that the mark is descriptive, not distinctive to the company. In such cases, the applicant then has six months to prove their case in a written response to the PTO. This is when the demonstration of size (discussed in the paragraph above) is usually laid out for the PTO.
- Companies do not have to be using the mark at the time of trademark application to successfully file a trademark. In some situations, companies can file trademark applications if they have a “good faith intent” to use such marks in the near future.
- Filing a trademark application with the USPTO usually costs $275 – $375 per class. While it is possible that someone without a background in intellectual property law could successfully complete a trademark application and have their mark placed in the Principal Register, the process is a bit of a long shot and will be a difficult process for the “amateur” applicant. Convincing the reviewer (who will be a lawyer) at the USPTO that your mark deserves placement in the Principal Register necessitates a thorough understanding of the law and a thorough understanding of what the USPTO is looking for in order to not just classify your mark as descriptive and therefore not worthy of trademarked status. Therefore, a good intellectual property lawyer is usually a good idea.