New York Trademark Attorney Blog
If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in the registration; (3) a date of constructive use of the mark as of the filing date of the application; (4) the ability to bring an action concerning the mark in federal court and to rely on the presumptions of ownership and exclusive right to use; and (5) acquiring “incontestable” status for the goods and services identified in the application, subject to certain statutory defenses.
There are additional rights granted to marks on the Principal Register, but the ones listed above apply only to marks on the principal register and not to marks on the supplemental register. The additional rights which apply both to the principal and supplemental register include: (1) use of the registration symbol ® with the mark; (2) filing suit in federal court for infringement, but note that the owner of the supplemental registration must prove it owns a proprietary interest in the mark by showing the mark has acquired secondary meaning before the adverse party’s priority date; (3) protection against registration of a confusingly similar mark under the Trademark Act, but marks on the principal register will receive broad protection while marks on the supplemental register will generally receive narrow protection based on how descriptive the mark is for the identified goods and services; and (4) the registration can be used as a basis for filing in a foreign country under the Paris Convention and other international agreements.
Regarding challenges before the Board (aka TTAB), the owner of a supplemental registration will have standing to oppose, but will still have to prove secondary meaning/acquired distinctiveness. Since marks on the supplemental register are presumed to be merely descriptive, evidence of secondary meaning must be submitted to the TTAB. If such evidence is not submitted, the Board will find against the owner of the supplemental registration and dismiss the notice of opposition with prejudice. See Otter Products LLC, v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012).
Otter Products LLC, v. BaseOneLabs LLC, also held that an opposer who owns a supplemental registration need not prove priority in a likelihood of confusion dispute because supplemental registrations are considered “marks” under 2(d) of the Trademark Act, but must prove secondary meaning. This same burden must be met by an opposer relying on common law rights in a likelihood of confusion dispute. An opposer relying on common law rights must establish a proprietary right (showing the mark has acquired distinctiveness) in the mark before the filing date of the opposed application or before the priority date established by the applicant. See our firm page entitled, Priority Determinations Based On Common Law Use for additional information on this topic.
Prior use of a trade name can provide a basis for opposition and cancellation under Section 2(d) of the Trademark Act. To establish trade name use, there is no need for formal adoption of the name, but instead simple use of the name to identifiy the company to the public is sufficient. A trade name may be used in a less prominent manner than a trademark, but the mere act of incorporation or formation doesn’t establish prior rights. The trade name must be used in a public manner to create an association between the company name and the goods or services. Examples of public use consist of signage, letterhead, brochures, use on a website, invoices, purchase orders or advertising or promotional materials.
However, the owner of a trade name must prove the trade name is inherently distinctive or has acquired distinctiveness pursuant to Section 2(f) of the Trademark Act if you are involved in a likelihood of confusion dispute. In other words, a trade name that is generic or merely descriptive (with no secondary meaning), will not provide a basis for opposition or cancellation where the grounds are likelihood of confusion. If you have questions concerning registered marks (on the principal or supplemental register) or common law rights do not hesitate to contact the firm for a courtesy consultation.