Irvine, CA asked in Trademark for California

Q: We want to see how we can change from supplemental to principal on our trademark.

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2 Lawyer Answers
Michael Gerity
Michael Gerity
Answered
  • Trademarks Lawyer
  • Phoenix, AZ

A: Hello. Assuming that you are talking about federal registrations, unfortunately, there is no way to convert your mark from one to the other. Instead, a new application has to be filed for the mark on the principal register. You will need to make sure that whatever objection got you moved to the supplemental register (usually an objection as merely descriptive) has now been resolved.

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Karima Gulick
Karima Gulick
Answered
  • Trademarks Lawyer
  • Irvine, CA
  • Licensed in California

A: There is in fact no such procedure as moving of a registration on the Supplemental Register to the Principal Register. The owner of a registration on the Supplemental Register must file a new application for the mark to secure registration on the Principal Register.

In the new application the registrant may note that it is the owner of a registration for the mark on the Supplemental Register. The registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness (15 U.S.C. § 1096).

While the continuous use of the mark for a period of at least five years is considered as some evidence of acquired distinctiveness, it is often not sufficient to overcome the descriptiveness deficiency of a mark. Oftentimes, the examining attorney will request more proof of acquired distinctiveness, such as evidence of notoriety, extensive advertisement of the mark, and declarations from third parties showing that the mark has become known and associated with the goods or services of the applicant/registrant.

INTA has great resources on these questions: http://www.inta.org/INTABulletin/Pages/TheUSTrademarkRegistersSupplementalvsPrincipal.aspx

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