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.
Other restrictions of a Supplemental Registration include: (1) the mark cannot achieve incontestability and (2) the applicant cannot designate an intent-to-use basis when originally filing the trademark application. The trademark has to be in use in commerce before applying to the Supplemental Register. Therefore, if an applicant wishes to amend from the Principal Register to the Supplemental Register, and the basis for use was intent to use, that applicant must wait until an allegation of use is filed. At that time, the application will be given a new filing date and a new search must be completed to ensure no subsequent applications came in following the original filing date.
The USPTO treats supplemental marks differently based on whether they are the subject of an inter partes case or an ex parte case. For example, in the ex parte context, the Trademark Office does not and cannot question the validity of a mark in a registration cited against another under 2(d). Therefore, An Examining Attorney will cite to a Supplemental Registration as a prior registered mark that supports a refusal of an applicant attempting to register on the Principal Register. However, the same treatment is not received before the Board.
There are some benefits to owning a Supplemental Registration. For example, you are entitled to use the ® symbol with your trademark. For those less educated, no one will be the wiser that your registration is a Supplemental Registration and not a Principal Registration. Your Supplemental Registration will appear in the database of the USPTO and act as a deterrent to third parties conducting preliminary clearance searches. As mentioned above Examiners will cite your supplemental trademark against subsequent applications, even against those applying to the Principal Register. Although difficult to prevail in infringement disputes, if you do you will be entitled to certain remedies under the Lanham Act. Lastly, a supplemental registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements. In my opinion, under most circumstances a Supplemental Registration is better than no registration at all. However, when adopting marks avoid the Supplemental Register and aim to have your mark on the Principal Register. If you have questions, concerning either of the two registers, please contact our office for a courtesy consultation.