How do I move my trademark from the Supplemental Register to the Primary Register?

How do I move my trademark from the Supplemental Register to the Primary Register?

A trademark is a symbol that a manufacture uses to distinguish its goods to consumers.  Trademark holders are granted the right to exude others from placing the trademark on goods not produced by the trademark holder.  The motivation behind trademark law is to protect consumers, not to reward producers.  Trademark law is intended to prevent consumer confusion and protect consumers from inferior quality products.  Protection for a trademark begins merely by using a trademark in commerce.  Registering a trademark with the United States Patent and Trademark Office will grant the owner of a trademark additional rights.  When a trademark is successfully registered with the Untied States Patent and Trademark Office, the trademark is placed on either the principal register of the supplemental register.

Trademarks which are placed on the principal register are granted the following rights:

  • Nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks
  • The possibility of achieving incontestable status after five years (which cuts off certain defenses of potential infringement defendants)
  • The right to bring a federal cause of action for infringement without regard to diversity or amount in controversy
  • The right to request U.S. Customs and Border Protection officials to bar importation of goods bearing infringing trademarks
  • Provisions for treble damages, attorney fees, and various other remedies.

Trademarks which are placed on the supplemental register are granted some additional rights rights.

  • Creates a first registration useful for securing some counterpart foreign registrations and priority there
  • Permits the use of the indicia of registration, including the registration symbol ® and such phrases as “Reg. U.S. Pat. and T.M. Off.”
  • Provides notice to those conducting trademark clearance searches
  • Serves as a bar to registration of subsequent confusingly similar marks

The supplemental register is a way to protect a trademark while distinctiveness is acquired, but most companies want their trademark to be placed on the principal register.  So the question then becomes how can you move a trademark from the supplemental register to the principal register?

Unfortunately, If you have a trademark which has been placed on the supplemental register and you want the trademark to be placed on the principal register you will need to file a whole new trademark application.  There is no method transfer the trademark between registers.

If you are thinking about filing for a trademark it is best to consult with an experienced trademark attorney to help you through the process.

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