The United States Patent and Trademark Office (USPTO) has two registers for trademarks: supplemental and principal. The supplemental register is reserved for descriptive, surname, and geographical marks that do not qualify for the principal register. Ideally you will be on the principal register, but sometimes, you are asked to be on the supplemental register. You can make arguments against the designation, but if you do not prevail, you may have to submit and have your mark placed on the supplemental register.
Being on the supplemental register does mean that you are federally registered, and you could use the (R) next to your mark. This also means that people could search the federal USPTO database and see your mark. This would also mean that confusingly similar marks wouldn’t be allowed to be registered, at least with the USTPO.
The main detriment to being on the supplemental register is that it doesn’t give you exclusive rights to the mark and there wouldn’t be the same presumption of validity as marks on the principal register. That means that if you sued someone in federal court for trademark infringement, you would first have to prove the mark was valid and distinct even though you have a federal trademark.
You can actually try and get a mark off the supplemental register and to the principal register if it has acquired distinctiveness. This would require a new filing to the principal register. After five years of use, it may be possible to get on the principal register, but that can be a pretty difficult and expensive process to show the mark has acquired distinctiveness.
I know there are a lot of things to think about. If you’re on the fence about federal trademark registration, either for cost reasons, register concerns, or other reasons, considering a State trademark may not be a bad option. If you are only concerned with companies in NM using your mark, then State registration, versus USPTO federal registration, may be the way to go. This is a cheaper and simpler process when compared to federal registration, but it only protects you in your State. Any infringement lawsuit would be in State Court. But, if you’re concerned about any spillover to other States, then the federal trademark may be the way to go. A NM trademark wouldn’t offer much, if any, protection in another State. Someone in the future may be able to obtain a federal trademark for a mark that is similar to your State trademark, but so long as you were the senior (earlier) user, you would be able to continue using your mark where you had already obtained common law rights, for instance, your State.
There are a few options to consider when looking at trademarking your company or product. Keep in mind what your intentions are as far as growing in the future, how much you are willing to police your mark, and costs. Speaking with an attorney about this is key prior to starting your business to make sure you start out right and don’t have to go and change your name or logo down the line.
Consult with Intellectual Property Attorney today to discuss all the issues when it comes to your business.
Author: Kameron Kramer
Kameron is an experienced business law and intellectual property attorney. With a technical background gained as a chemical engineer, Kameron uses his varied skills to provide general counsel and start-up services to many local and regional companies.