Our Blog

18
Feb

Registering A Trademark On The Supplemental Register of the USPTO

What are the benefits and disadvantages of registering a trademark on the Supplemental Register of the U.S. Patent and Trademark Office (USPTO) and the process of registering on the Supplemental Register after an initial denial?

The Client has applied for a trademark on the Principal Register however that application was denied. As a result, the Client is considering registering on the Supplemental Register.

What are the benefits of registering a trademark on the Supplemental Register of the USPTO? The Supplemental Register is used to register a trademark that is descriptive but has the possibility to identify goods or services.[1]  Some benefits that registering on the Supplemental Register include the ability to use indicia of registration including “Registered in U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & TM. Off.”, and the “®” symbol.[2]However in a lawsuit, no profits or damages will be recovered unless the defendant had actual notice of the registration. [3]A mark registered on the Supplemental Register will also provide notice to people conducting trademark searches and can serve as a bar to registration of subsequent confusingly similar marks.[4]If the mark has the potential to become distinctive through use in commerce, a mark registered on the Supplemental Register may apply once more for the Principal Register.[5]

What are the disadvantages of registering a trademark on the Supplemental Register? Marks registered on the Supplemental Register do not receive the advantages of §§ 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063-1068, 1072, 1115, and 1124 of the Trademark Act.[6]This means a mark registered on the Supplemental Register may not have the power to achieve incontestability of the mark, does not imply the right to exclusive use of the mark, may not have the ability to cancel the registration of another mark, does not have the presumption of Federal ownership, and provides protection for only nondistinctive trademarks. 

What is the process of registering a trademark on the Supplemental Register of the USPTO if the initial application to the Principal Register was denied? If the initial application to the Principal Register was denied with a “nonfinal Office action”, a trademark registration application can be amended to the Supplemental Register by filling out a “Response to Office Action” online form.[7]  If the initial rejection was denied with a “final Office action”, then the “Request for Reconsideration after Final Action” online form must be used.[8]Unlike an application for the Principal Register, the mark must be in use by the time of application on the Supplemental Register. 


[1]15 U.S.C.A. § 1091(a). 

[2]15 U.S.C.A. § 1111. 

[3]Id. 

[4]15 U.S.C.A. § 1092. 

[5]15 U.S.C.A. § 1095. 

[6]15 U.S.C.A. § 1094. 

[7]How to Amend from the Principal to the Supplemental Register, U.S. Patent and Trademark Office, https://www.uspto.gov/trademark/laws-regulations/how-amend-principal-supplemental-register-1 (last visited Jan. 25, 2019). 

[8]Id.

15
Aug

Thinking Globally: Key Trends in International Business

international

Does your business have a global vision? Whether you are looking to form strategic corporate relationships overseas or cultivate an international audience for your products, it is key to stay aware of the relevant trends and changes across the world. With increased connectivity, your competitors are not only local, but also global. Information travels quickly and can be require significant review to parse through and determine what your business truly needs. A qualified international corporate attorney can help you evaluate your business priorities; whether you are based in Gainesville, London, Cleveland, Austin or Zurich, legal counsel can help ensure you are prepared for global competition. Additionally, staying aware of trends can help prepare you for your business’s next steps. Read below for three key trends that every business owner needs to know.

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9
Aug

Happy National Book Lover’s Day!

Our Favorite Business Books

books

It’s back to school for so many! For those of us no longer in the classroom, every day is an opportunity to learn and improve ourselves. In honor of national Book Lover’s Day, check out our team’s favorite business books and why they are worth a read.

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3
Aug

The Nonprofit Outlook: Staying Ahead of the Financial Curve

nonprofittrends

As a tax-exempt organization, your business goals are likely not profit-driven, but they are purpose-driven. That’s fantastic and truly why your organization is authentic with heart and impact! However, adopting a financially competitive mindset can lead to more and better services provided, which leads to more lives being changed. The following are key ways to stay ahead of the financial curve:
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9
Jul

Brexit and Your Business: The Domino Effect

How Brexit May Affect Your Company
brexit
Two years have passed since Britain voted to leave the European Union (EU), and it is creating an uncertain atmosphere in the EU as well as around the world. While a majority of the document has been agreed to by both parties, some major sections are still uncertain, which is drastically reducing the amount of investments made in the UK. The British government wishes to keep visa-free travel with other countries of the EU, yet whether this is reciprocated is unclear.
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28
Jun

The Play-Doh Scent is Now Trademarked, and Five More Trademark Facts that Will Surprise You

trademark

Play-Doh recently received approval for its trademark on the Play-Doh scent, a distinctive smell that brings back childhood memories for many of us. If any competitors produce a modeling clay that smells too much like Play-Doh, they could be putting themselves at risk for a lawsuit. That scent now has the full protection of the United States Patent and Trademark Office (USPTO).

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13
Jun

Subsidiary vs. Branch: Best Choice of Structure for Your Growing Business

subsidiary

As your company grows, the time will arrive when you need to consider the next step for the company. This could mean expanding your company to a new location. One of the first decisions you must consider is the demand you seek to fill in your target market and how you want to structure your expansion. When considering the structure, you want to consider if it would make the most sense to have a branch or a subsidiary. To make this determination, we must consider what would be the differences between the two.

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4
Jun

The “Netflix Model” for Donations

nonprofit
In the age of the internet, the world is at your fingertips. Business transactions can cross thousands of miles in a matter of seconds when using online platforms. For nonprofit organizations who take advantage of this connectivity, the opportunities for growth are endless.

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24
May

Decoding the General Data Protection Regulation (GDPR)

Key Aspects of the General Data Protection RegulationFinal

What is it?

On May 25th, 2018, a new law concerning privacy and data protection will come into effect in the European Union. The Guardian calls it the “biggest personal data shake-up since 1995.” The GDPR updates the 1995 European Union Data Protection Directive to apply to the advances in technology that many consumers rely on today. Overall, the legislation requires companies to adopt greater transparency when handling individual data. It also transfers much of the decision-making power from the companies to the consumers.

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23
Apr

5 Keys to Expanding Your Non-Profit Abroad

shutterstock_69021739

You began your organization with a mission. You provide services or aid to a target population. Whatever your charitable purpose, you are driven by a desire to see change. After establishing your organization, ensuring governmental compliance, building a network of sustainable donations, and seeing your work create change in your community, what’s next?

Your organization may be ready to grow internationally. This ambitious goal requires preparation. Here are five keys to expanding your non-profit abroad.

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