Friday, January 04, 2013

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.


At 10:48 AM, Anonymous Dan R said...

Seems like they want to have their cake and eat someone else's cake too. A Supplemental Registration "is not prima facie evidence of anything except that the registration has issued," except when cited by the PTO in which case suddenly the PTO can't penetrate the nonexistent presumption of validity. That makes a lot of sense. If you can't oppose under 2(d) based solely on a supplemental registration, the PTO should not be able to cite a supplemental registration under 2(d).

A better rule would be to not give the opposer relying on a supplemental registration the benefit of the filing date to establish priority. Make the opposer show when the mark acquired secondary meaning. That is what you would have to do if you assert a descriptive common law mark in court.

At 11:04 AM, Anonymous Dan R said...

Actually what I should have said is either a supplemental registration is valid or it isn’t, and the answer shouldn’t depend on who is using the supplemental registration as a weapon. A supplemental registration is a fictional right (just like using the filing date of an ITU application for priority), and as long as that is the case, then you have to live with that fact in both oppositions and in responding to 2(d). It doesn’t make sense to require anyone to prove its real, it’s not real by definition.

If you can't allow an opposer to rely on a supplemental registration, then why allow someone to establish priority based on ITU filing date? Neither one of them are real.

At 9:03 AM, Anonymous Anonymous said...

The Court of Appeals for the Federal Circuit found it is covered in the statute. Towers v. Advent Software, 913 F2 942, 16 USPQ2d 1039, footnote 2 (Fed. Cir. 1990).

At 9:32 AM, Blogger John L. Welch said...

The Towers case is cited by the TTAB. The Otter decision does not break any new ground.

At 5:11 PM, Anonymous Anonymous said...

Actually it makes more sense with the whole:

Before Otto Roth, the CCPA decided In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978). Clorox involved an ex parte rejection of an application for Principal registration on the basis of a previous registration on the Supplemental Register. The court held that under section 2(d), "a mark registered in the Patent and Trademark Office" includes marks registered on the Supplemental Register and that such terms may be used as a basis for refusing registration under section 2(d) due to a likelihood of confusion. The CCPA rejected the argument that a term registered on the Supplemental Register must be shown to have acquired secondary meaning before it can support a conclusion that confusion is likely.2 The Clorox rule has been reaffirmed by this court. In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed.Cir.1986).


The result in Clorox has been characterized by Professor McCarthy as "somewhat bizarre." 1 J. McCarthy, Trademarks and Unfair Competition Sec. 19:8 at 888 (1984). He points out that a term on the Supplemental Register is not, strictly speaking, a "mark" because it is only "capable" of becoming a mark upon the acquisition of secondary meaning. Thus, the holding in Clorox has the result that a "non-mark" is used to prevent Principal registration of a "real mark" to another party. As shown in Clorox, that result is supported by the plain terms of the statute. The result is also supported by the legislative history. See Ex parte Jacobson & Sons, Inc., 97 USPQ 465 (Ch. Exam.1953)


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