Precedential No. 39: Plaintiff That Relies Solely on a Supplemental Registration Cannot Prevail in a Section 2(d) Proceeding
In this Section 2(d) opposition, Otter Products relied solely on its Supplemental Registration for the mark IMPACT SERIES for cellphone protective cases, claiming likelihood of confusion with the applied-for mark IMPACTBAND for similar goods. The Board granted applicant BaseOneLab's motion to dismiss under Section 2.132(b), ruling that Otter's mark is presumed to be merely descriptive and that, absent additional evidence, Otter cannot prevail based solely on its ownership of a Supplemental Registration. Otter Products LLC v. BaseOneLabs LLC, 105 U.S.P.Q.2d 1252 (TTAB 2012) [precedential].
Rule 2.132 provides for involuntary dismissal of a proceeding if (a) a plaintiff has not taken testimony or any other evidence (failure to prosecute), or (b) plaintiff relies only on PTO records and defendant establishes that plaintiff has "shown no right to relief." The Board rejected applicant's claim under Rule 2.132(a), because Otter did offer "something," i.e., its Supplemental Registration. The Board agreed with applicant, however, that Otter had failed to show a right to relief.
Otter's ownership of a Supplemental Registration sufficed to give it standing to oppose, and removed priority as an issue in the proceeding. But to prevail under Section 2(d), an opposer must show that it has "proprietary rights in the term [it] relies upon to demonstrate likelihood of confusion as to source."
Otter failed to provide any evidence that it has proprietary rights in the mark IMPACT SERIES. Otter's only evidence, the Supplemental Registration, is not evidence of ownership, validity, or the exclusive right to use. In short, it does not enjoy the presumptions of Section 7(b). See Section 26 of the Act. A Supplemental Registration "is not prima facie evidence of anything except that the registration has issued."
The mark in Otter's Supplemental Registration is presumed to be merely descriptive. Because Otter provided no evidence of acquired distinctiveness, it could not prevail in this proceeding.
The Board noted that a mark on the Supplemental Register may be cited as a basis for refusing registration to another mark under Section 2(d) because, in the ex parte context, the PTO does not and cannot question the validity of a registered mark that is cited against another mark under Section 2(d).
In the inter partes context, however, the Otto Roth doctrine requires that a plaintiff establish the validity of the mark it asserts in order to prevail on a claim of likelihood of confusion.
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Text Copyright John L. Welch 2013.