Supplemental Registrations and Acquired Distinctiveness: Did The TTAB Get This Right?
In the SEXSTROLOGY case that I blogged yesterday, the TTAB had this to say (at page 14) about the Supplemental Register:
1. According to the Board, Section 23 of the Trademark Act dictates that "a mark that is registrable on the Principal Register may not be registered on the Supplemental Register." Is that a correct reading of the Statute?
Section 23 says" "All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … may be registered on the supplemental register …." But Section 23 does not say that ONLY marks not registrable on the principal register may be registered on the supplemental register.
2. The Board also said, in footnote 8, that registration on the Supplemental Register constitutes an admission that the mark is merely descriptive. Section 27, in pertinent part, says that "registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness." The Board reads this to mean that acquired distinctiveness must come later, since the securing of a Supplemental Registration is an admission of mere descriptiveness at the time of issuance.
But I read Section 27 as speaking about the time of the registration: i.e, at the time of registration, acceptance of an Supplemental Registration is not an admission that the mark has NOT acquired distinctiveness.
In short, I think securing a Supplemental Registration is an admission only that the mark is not INHERENTLY DISTINCTIVE at the time of registration, not an admission that it is merely descriptive, and so one may later establish that the mark had acquired distinctiveness even before the date of the Supplemental Registration.
What do you think?
This discussion in the SEXSTROLOGY case was probably dictum, since Opposer was unable to prove acquired distinctiveness at any time, and the Board considered the pre-registration evidence "as part of the total picture."
Read comments and post your comment here.
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 7/08/2016
6 comments
6 Comments:
I agree with you, John, regarding Footnote 8. Amendment to the Supplemental Register constitutes an admission as to inherent distinctiveness, that much is clear. This note is troubling, almost certainly wrong, and deserves more scrutiny. The language of Section 27 is not only prospective, and the cases cited by the Board do not support such a reading. Otherwise there are many situations where we would counsel clients to drop an application rather than amend to the Supplemental Register, which doesn't make any sense.
John, thanks for taking the time to look more closely at this. I find TTAB decisions are sometimes inconsistent and this seems to be just wrong. I agree that there is a substantive difference between admitting a mark in not inherently distinctive (statute language) as opposed to merely descriptive (opinion language).
Seems to me that this is pretty established (guess not) law going back to Bartles & Jaymes sitting on their porch...
California Cooler v. Loretto Winery, Ltd., 774 F. 2d 1451 9th Circuit 1985
Loretto's threshold defense is that registration on the supplemental register constituted a binding admission that a registrant could not prove that secondary meaning had been acquired as of the time of registration. Thus, argues appellant, the registrant is, by virtue of the supplemental registration, barred from establishing secondary meaning in subsequent litigation against any alleged infringers using the mark at the time of registration.
We are unable to find any support for such a proposition. The Lanham Act does not so provide.
To your first point, I actually think it's a reasonable interpretation of Section 23 to say that material eligible for the principal register can't be placed instead on the supplemental register. (See also TMEP § 815.01 ("A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register.").)
Section 23 describes the type of mark that may be registered on the supplemental register. The statute says, essentially, that all marks that can't be registered on the principal register that have certain characteristics can be registered on the supplemental register. So all marks of type X can go on the supplemental register. It doesn't follow that all marks of type Y can *also* go on the supplemental register. I don't think that saying "These marks can go here" means that "Any marks can go here."
Plus, the statute specifies that the marks that may go on the supplemental register are "not registrable on the principal register," which also makes me think that the Board's interpretation is right.
The TMEP is not the law.
I think Section 23 just says that all is not lost if you can't get on the principal register. Again, doesn't say "only."
Quoc Viet Foods v. VV Foods (C.D. Cal., June 14, 2016) 2016 WL 3536708, at *6-7, suggests that registration on the Supplemental Register is an admission, but is not conclusive (i.e., rejecting the argument that marks are descriptive as a matter of law because the owner chose to accept registration on the Supplemental Register). The registrant can still prove that a mark had acquired distinctiveness pre-registration. Quoc Viet Foods, citing 3 McCarthy § 19:43 (commenting that while registration on the Supplemental Register may not “estop the applicant from proving ... in court” that a mark acquired secondary meaning pre-registration, it should count as an “admission against interest” that the mark is descriptive), and California Cooler, Inc. v. Loretto Winery, Ltd.
Additionally, the March 15, 1988 Report of the Senate Judiciary Committee, Subcommittee on Patents, Copyrights, and Trademarks characterizes that statutory provision (“…shall not constitute an admission…”) as codifying California Cooler so that “a supplemental registrant is not barred from establishinq secondary meaninq aqainst an alleqed infrinqer usinq the mark at the time of reqistration.”
Here’s an excerpt from that Report…
s. 1883 appropriately eliminates (i) the requirement that a trademark owner use its mark for one year prior to the filinq of an application to reqister the mark on the supplemental reqister and (ii) any inference that application for or registration of a mark on the supplemental register constitutes an admission that the mark has not acquired secondary meaninq. USTA supports both of these changes to section 23 of the Lanham Act.
…The second will codify the holding in California Cooler, Inc. v. Loretto Winery, Ltd., 774 F2d 1451, 1454, 227 USPQ 808, 809-10 (CA 9 1985), that a supplemental registrant is not barred from establishinq secondary meaninq aqainst an alleqed infrinqer usinq the mark at the time of reqistration.
[Email me if you want a copy of that Report – dlytle@hcesq.com]
Regards,
Doug Lytle
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