TTAB Grants Petition to Cancel MEN'S DIVORCE Supplemental Registration for Legal Services
In an rare situation, the Board faced the question of whether the owner of a merely descriptive term may cancel a Supplemental Register registration for the same term. The Board granted this petition for cancellation of a Supplemental Registration for the mark MEN'S DIVORCE for legal services, finding the mark likely to cause confusion with the previously used but unregistered mark and trade name MEN'S DIVORCE LAW FIRM for divorce and family law services. Respondent admitted that the marks are confusingly similar, and so the question came down to priority. The Board found that petitioner was the first to use its mark in the manner of a source indicator. Jeffrey Feulner, P.A. v. Cordell Practice Management Group, LLC Cancellation No. 92056202 (October 26, 2015) [not precedential].
The Board distinguished Otto Roth & Co., Inc. v. Universal Foods Corp., 209 USPQ 40, 43 (CCPA 1981), which holds that a plaintiff "must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion." Otto Roth is limited to proceedings challenging registration on the Principal Register.
… the ruling on the merits in Otto Roth, in any event, is not controlling here. The Otto Roth opposer sought to prevent the applicant’s registration of an arbitrary mark on the Principal Register on the basis of prior use of a descriptive phrase. One who had proprietary rights in a mark was being attacked by a party who had established no rights in a mark on the ground that the applicant’s use would be attributable to opposer. In contrast, this case concerns a registration for a descriptive term on the Supplemental Register. The registrant here has as yet no proprietary rights in a mark …. The statute does not require the anomalous result that a junior user is entitled to keep its Supplemental Registration for a descriptive term in which it has not established secondary meaning (as evidenced by registration on the Supplemental Register) because a prior user cannot show secondary meaning in that term either. Books on Tape, Inc. v. Booktape Corp., 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
In short, the Board ruled that petitioner here did not need to establish acquired distinctiveness in order to prevail.
Moreover, the Board stated (in dictum) that, even if Otto Roth were inapplicable, petitioner established acquired distinctiveness in Central Florida, where both parties offered their services. Assuming Petitioner’s mark is not generic (an issue not before the Board), petitioner had established "priority of acquired distinctiveness."
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TTABlog comment: Makes sense to me. Otherwise it is too difficult to knock out a Supplemental Registration. Note that in petitioner's pending application, which was blocked by the challenged registration, it disclaimed "men's divorce."
Text Copyright John L. Welch 2015.