18
Feb

Registering A Trademark On The Supplemental Register of the USPTO

Did you know that there is a principal and supplemental registry where you can register your trademark? Registration on the Principal Register affords all rights and responsibilities available to trademark owners. However, there may be a time when an applicant may not be able to register on the Principal Register and the only option is registering on the Supplemental Register[1].

The question then becomes, what are the benefits and disadvantages of registering a trademark on the Supplemental Register with the U.S. Patent and Trademark Office (USPTO)?  Some benefits of 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, it is important to note, that no profits or damages will be recovered unless the other party attempting to use the mark (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 marks which may be confusingly similar[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].

In the alternative, there are some 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, the mark does not have the right to exclusive use of the mark, may not have the ability to cancel the registration of another mark that may be similar to it, does not have the presumption of Federal ownership, and supplemental registration provides protection for only nondistinctive trademarks. 

Once you decide to use the supplemental registry, what is the process of registering a trademark on the Supplemental Register? 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. 

If you would like additional information, contact our legal counsel for a complimentary consultation at ngonzalo@gonzalolaw.com.

 


[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.

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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18
Mar

Businesses Should Be On Guard for Phishing Scams

Phishing

Email phishing has become a widespread problem throughout the cyber world. Almost everyone is vulnerable to phishing. Phishing occurs when a fraudulent email appears to originate from a legitimate business. The business is usually a well-known organization that a person regularly conducts business with such as a financial institution, internet provider, or any other similar organizations. There is usually a link in the email that directs you to another website that is a sham. These sites will ask for personal information about you to allegedly verify your identity but in reality they are deceiving you into divulging this information so that they may commit identity theft.

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4
Mar

FBI vs. Apple

                                                                                            FBI               

As the accuracy and precision of technology improves, tech companies struggle to answer unavoidable and complex questions. Whether they want to or not, companies face the challenge to find a balance between the privacy rights of individual users and the national security interest of the entire public. This is most clearly demonstrated in the current stand-off between the federal bureau of investigation (FBI) and leading tech company, Apple, due to Apple’s encryption software.

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19
Feb

What is a Dual Representation Agreement with a Lawyer and When is it Used?

ProsCons             Deciding when to invest in an attorney is an important decision. Frequently, people hope to save money and have one attorney or agent represent the interests of both individuals on either side of a dispute. However, in order to do so the attorney must comply with strict disclosure rules for the state in which he or she is practicing. Both parties on either side of the conflict must be made aware that there is a potential conflict, that they have the right to independent representation, and they generally are required to sign a written agreements acknowledging they have been made well aware of their rights. Sometimes this agreement is reached and both parties and the attorney will review and be asked to sign a conflict of dual representation agreement. Read more

18
Dec

Options If Your Company has had a Trade Secret or Confidentiality Breached.

trade secret agreement

In the world of business today, protecting confidential information and trade secrets is an important part of conducting business. Business owners should be sure to have a detailed and carefully drafted agreement in place for all employees and vendors with whom their company conducts business. An agreement that will withstand legal scrutiny in litigation or arbitration is especially important. These agreements should list the specific items or types of items considered confidential or to be trade secrets. This is vital because the court must be able to easily determine when there has been a breach of the stated contract terms. Frequently, companies use very broad terms such as “all information pertaining to the company.” However, many things pertaining to the company would not be considered confidential information or a trade secret. This type of terminology would be overly broad. Using broad language opens the door to legal interpretation. When this occurs, it requires the court to define for a company what item truly is a trade secret or is confidential information. A company, rather than the court however, is in a much better position to define this. As such, having this definition already included in the agreement is most prudent.
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4
Dec

What Is the Technology Evolution Pilot Program and How Will It Benefit Your Trademark?

pilot program
With technological advancement, comes the increased need for new rules and regulations regarding trademarks. On September 1, 2015, the United States Patent and Trademark Office (USTPO) began implementing a pilot program called The Technology Evolution Pilot Program. This program makes it possible for trademark owners to expand the trademark registrations of their goods and services. Thus, trademark owners may be permitted to keep their current trademark without having to file a new application if the revised registration of the existing mark is due to a technological advancement of the current mark. This change will enable trademark owners to save the time and money often involved in changing an existing trademark registration.

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4
Nov

Obtaining a Trademark, Logo, or Brand Registration in India.

 

trademark registration in india

Trademark Registration In India

There are several opportunities for companies in India today. The country of India has a large nucleus of business that provides a wide assortment of services and products to the international marketplace. When it comes to intellectual property, such as trademarks, logos, and brand recognition in India, there is a specific set of rules and forms that must be filled out and filed properly in order to register your intellectual property. These rules differ significantly from the procedures that are required in the United States.

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28
Sep

How Was I Filmed Without Consent? The Crowd Release Notice

crowd release notice
Have you ever walked into a public venue and noticed a sign posted on the door that says, “CROWD RELEASE”? Did you stop to read what it said or did you just keep walking and put it out of your mind? Then maybe months later your friends start calling you to tell you that they saw you on television or maybe on the internet. Now you start wondering how someone was allowed to film you without your permission. Read more

25
Sep

Managing Your Intellectual Property Portfolio: Case Studies

Intellectual Property Portfolio

Doppelgängers in retail? That’s right! Australia seems to be copying a few of our all-American favorite stores like Target, Kmart, and Kohl’s. When you decide to start a business or if you have a product that you want to put on the market, you have to decide the future of your intellectual property. In our society, it is very easy for things to go viral. This is especially true with regard to social media exposure, which allows for items to go global rather quickly. For that reason, you have to make sure your IP is properly registered and or licensed. You must think about the effects of your product not just in your immediate market, yet the world as a whole.

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