This week I addressed one issue repeatedly with prospective clients and the dialogue prompted me to write this blog. Generally, trademark attorneys counsel clients to avoid descriptive marks that will register on the Supplemental Register. For the basic facts regarding the Principal and Supplemental Registers, see our webpage entitled, Filing Your Trademark On The Principal And Supplemental Registers.
The Trademark Trial and Appeal Board (the “Board” or the “TTAB”) has held that neither an opposer nor a petitioner can prevail in a likelihood of confusion proceeding based solely on its Supplemental Register Registration. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. This is because the opposer must prove he has proprietary rights to be successful. If proprietary rights do not exist, then there cannot be likelihood of confusion as to source. An owner of a Supplemental Registration must prove ownership, validity of the mark, and exclusive right to use the mark, and acquired distinctiveness. Conversely, a Principal Registration is entitled to certain presumptions under the law such as the registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, the exclusive right to use the mark in commerce, and of the continued use of the mark in commerce since the filing date of the application.
A Supplemental Registration is not prima facie evidence of anything except that the registration issued. If a mark is on the Supplemental Register, it is presumed to be descriptive, at least at the time of registration and the owner must demonstrate subsequent to registration that the mark acquired distinctiveness in order to show proprietary rights. To review how a trademark owner can prove acquired distinctiveness, see our webpage entitled, What Is Acquired Distinctiveness & Secondary Meaning?
Without a Principal Registration, a trademark owner of a Supplemental Registration attempting to enforce its rights in an infringement proceeding will be placed in a similar position to an owner of common law rights. Ownership of a Supplemental Trademark Registration may impose “standing” to bring an opposition or cancellation before the TTAB, but it does not mean the presumptions attendant under section 7(b) will be given to a supplemental registration.