How to Convert Trademark from Supplemental Registration to Principal Registration?

Narendra Kumar

24 May, 2019

Do you have any idea about trademarks? A trademark is a name or symbol that a company uses on its products. Trademark also protects the rights of the owner over its product, sign, design etc.  The concept of supplemental trademark registration and Principal trademark registration exists in the USA. If a trademark owner is holding supplemental trademark registration in the USA and is willing to convert trademark the same into Principal registration in another country other than the USA. For example India.

Here in this blog, we would update you regarding the conversion process. Further, we would guide you about what supplemental trademark and principal trademark is.

What are Supplemental Trademark and Principal Trademark Registration?

The United States Trademark Act provides two types of registration of trademark with the United States Patent and Trademark Office. These two types of registrations are:

1. Principal registration

This is meant for those trademarks which are mostly arbitrary and suggestive.

2. Supplemental registration

Supplemental registration is treated as the secondary registration of the trademarks.

Moreover, Supplemental registration is only meant for descriptive trademarks which have not acquired any distinctiveness (easily distinguishable). It allows domestic registration of a trademark which does not fulfill all the requirements of Principal registration.

Major Difference between Principal and Supplemental Registration

Under the United States Trademark Act, Principal registration varies from supplemental registration. There are numerous differences between Principal registration and supplemental registration. The difference between principal registration and supplemental registration is given below in tabular form:

Advantages of Principal Trademark Registration

If an owner of a trademark takes Principal registration, then he/she is entitled to avail a number of benefits and advantages. The list of the advantages of Principal registration is discussed below:

• A trademark owner who takes Principal Trademark registration has the right to file suit against trademark infringers in a federal court.
• Principal trademark registration is considered as a good piece of evidence with regard to the validity of trademark registration, ownership of the trademark etc.
• By taking Principal registration, a trademark owner gets all the right to use the registration Symbol. (®)
• Under Principal Registration, a trademark owner is eligible to avail remedies like compensation, the filing of a suit against trademark infringer etc.
• The Principal registration enables a trademark owner to get access in the U.S.A customs department. By submitting trademark registration certification, the trademark owner is able to stop the importation of goods to avoid the infringement.

What are the Reasons for not using Supplemental Trademark?

Though a Supplemental Trademark registration provides basic protection to your trademark, however, it never gives you certain rights. The reasons not to use the Supplemental Trademark registration are as follows:

• It does not provide exclusive rights to use the trademark.
• It is not a prima piece of evidence with regard to the validity of trademark registration.
• If in future trademark dispute arises, then a supplemental registration will never support the claim of the trademark owner.
• Supplemental Trademark registration never helps a trademark owner to get access in the U.S.A Customs Department.

List of the marks that cannot be Registered in Supplemental Registration

There are certain marks which cannot be registered under supplemental trademark registration. These are as follows:

• Those marks which are eligible for Principal Registration,
• A functional mark,
• The mark that is incapable of distinguishing the goods and services of a trademark owner.

Will you be able to Convert Trademark From Supplemental Registration to Principal Registration?

Please note that a trademark registered under Supplemental registration cannot be converted to a principal registration.

However, to get the registration of the trademark in Principal registration, the trademark owner needs to produce proof that his/her mark acquired distinctiveness. However, the trademark owner after five years of continued use of the trademark can apply for Principal registration. As proof, the owner of the trademark can produce sales receipts, advertisements, and brochures of his/her trademark.

Section 2(f) of U.S. Trademark Act permits the trademark registration in Principal register if the owner of the trademark acquired distinctiveness relating to the goods or services.

Conclusion

Under the US Trademark Act, principal registration is best for registration of a trademark. Through Principal registration, a trademark owner is eligible to get many rights and benefits. Principal registration gives exclusive rights to the owner to use the trademark. If any trademark owner takes registration under supplemental registration then it will be advisable to convert same into Principal registration.

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