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.

18
Feb

What Is The Process For Registering Intellectual Property In Foreign countries?

                           

Generally, each country has enacted its own laws regarding intellectual property. For example, a U.S. trademark is only protected within the United States. However, there are treaties signed by multiple countries that make it easier to register intellectual property in the signatory countries. For example, the Patent Cooperation Treaty (PCT) is signed by 151 countries. Also, the Madrid Protocol serves a similar purpose for trademarks as the PCT does for patents. While copyrights are protected works of authorship with protection beginning as soon as the work is created, the Berne Convention is a treaty that has all signatory countries recognize the copyrights of authors within other signatory countries.

The Patent Cooperation Treaty, signed by approximately a hundred and fifty countries, is perhaps the easiest way for intellectual property owners to file patents abroad. A list of countries that are part of the Patent Cooperation Treaty may be found here.[1]The advantage of the Patent Cooperation Treaty is one application filed in a signatory country can be forwarded to the rest.[2]This way, one files a patent in the home country meeting the domestic requirements.[3]After which, one may file an international application to a Receiving Office.[4]The International Search Authority will conduct an international prior art search report along with a written opinion regarding the patentability of the intellectual property.[5]Within eighteen months of the filing date, the patent application is published and will preclude any subsequent application for a similar patent.[6]Once the patent is published internationally, the intellectual property owner may receive patent protection in each signatory country.[7]Each country will approve or deny the application based on its own domestic laws.[8]

The process for registering trademarks under the Madrid Protocol is similar to that of the patent process.[9]A list of countries participating in the Madrid System may be identified.[10]An intellectual property owner will register the trademark within the home signatory country.[11]After approval in the domestic country, the intellectual property may file an international application.[12]In the international application, the intellectual property owner will choose the countries in which the intellectual property owner wishes to receive protection and must pay the national filing feels with each country applied to.[13]Finally, the World Intellectual Property Organization will review the international application and forward it to all countries where each will approve or deny the application.[14]

The process for registering copyrights internationally varies from the process for registering patents and trademarks because copyrights do not generally need registration to be 

effective.[15]Copyrights are to protect works of authorship and go into effect whenever the work is created.[16]The Berne Convention allows all copyrights created in one signatory country to be automatically protected in every other signatory country.[17]A list of the one hundred and seventy-six countries covered by the Berne Convention can be found here.[18]As a result, if one creates a copyright, that copyright will more likely than not be protected automatically internationally. 


In conclusion, if one wishes to do business in a country internationally, it is advised to ensure that one’s intellectual property is protected. After ensuring one’s intellectual property is protected in the domestic country, the first step is to check to see the county one wishes to do business in has signed one of the intellectual property treaties. If the international and domestic country are both signatory countries, then one may easily register the intellectual property abroad. If the domestic or intentional country is not a signatory of one of the intellectual property treaties, then that person must register the intellectual property separately within the international country according to its national laws. 


[1]The PCT now has 152 Contracting States,World Intellectual Property ORGANIZATION, https://www.wipo.int/pct/en/pct_contracting_states.html, (last accessed Jan 30, 2019).

[2]Stephen Schlett, How to Register International Intellectual Property, lawtrades, (Jan 31, 2017), https://www.lawtrades.com/blog/blog-post/how-to-register-international-intellectual-property/.

[3]Id. 

[4]Id.

[5]Id.

[6]Id. 

[7]Id.

[8]Id.

[9]Id.

[10]WIPO-Administered Treaties,World Intellectual Property ORGANIZATION, https://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=8, (last accessed Jan 30, 2019).

[11]Stephen Schlett, How to Register International Intellectual Property, lawtrades, (Jan 31, 2017), https://www.lawtrades.com/blog/blog-post/how-to-register-international-intellectual-property/.

[12]Id.

[13]Id. 

[14]Id.

[15]Id.

[16]Id.

[17]Id.

[18]WIPO-Administered Treaties,World Intellectual Property ORGANIZATION, https://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=8, (last accessed Jan 30, 2019).

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.

Read more