How to Appeal a Trademark Trial and Appeal Board (TTAB) Decision

Introduction

The Supplemental Register is a lesser-known yet crucial component of the U.S. trademark system. It serves as a secondary register, offering certain benefits to trademarks that may not qualify for the Principal Register. Understanding the Supplemental Register is essential for businesses, legal practitioners, and brand owners who seek to protect their trademarks, especially those marks that are descriptive or lack distinctiveness at the time of application. This article provides a detailed overview of the Supplemental Register, exploring its history, purpose, legal framework, advantages, limitations, and practical implications for trademark applicants.

Historical Background

The concept of a dual-register system in the United States dates back to the Lanham Act of 1946, which established both the Principal and Supplemental Registers. The Lanham Act was a response to the growing need for a comprehensive federal trademark law that could provide a uniform system for trademark protection across the United States. Before the Lanham Act, trademark protection was fragmented, with varying rules and regulations at the state level. The introduction of the Supplemental Register was a strategic move to address the challenges posed by marks that were not inherently distinctive but could acquire distinctiveness over time.

Purpose of the Supplemental Register

The Supplemental Register exists to provide a form of federal protection for marks that do not meet the stringent requirements of the Principal Register. Specifically, it caters to trademarks that are descriptive, geographically descriptive, or surnames. These types of marks, while not eligible for the Principal Register due to their lack of inherent distinctiveness, may still benefit from federal registration. The Supplemental Register allows these marks to gain certain legal protections and, over time, possibly acquire distinctiveness, making them eligible for the Principal Register.

Legal Framework and Eligibility Criteria

Eligibility Requirements

To be eligible for the Supplemental Register, a trademark must be in use in commerce and meet certain criteria, including:

• Descriptive Marks: Marks that describe the goods or services to which they are applied (e.g., “Fast Car Wash” for car washing services) are generally not distinctive enough for the Principal Register but can be placed on the Supplemental Register.
• Geographically Descriptive Marks: Marks that primarily describe a geographical location (e.g., “California Wines” for wines produced in California) are eligible for the Supplemental Register.
• Surnames: Marks that are primarily merely a surname (e.g., “Johnson” for a law firm) may be registered on the Supplemental Register if they lack distinctiveness.
• Non-Distinctive Trade Dress: Certain non-distinctive product packaging or design features may also qualify for the Supplemental Register.

Exclusions

Not all marks are eligible for the Supplemental Register. The following categories are typically excluded:

• Generic Terms: Terms that are common names for the goods or services (e.g., “Bread” for a bakery) are not registrable on either the Principal or Supplemental Registers.
• Confusingly Similar Marks: Marks that are confusingly similar to existing registered trademarks are not eligible for the Supplemental Register.
• Deceptive Marks: Marks that are deceptive or misleading about the nature or quality of the goods or services are not eligible.
• Scandalous or Immoral Marks: Marks that are considered offensive or immoral are excluded from both registers.

Application Process

The application process for the Supplemental Register is similar to that of the Principal Register. An applicant must file a trademark application with the United States Patent and Trademark Office (USPTO), specifying that the mark is intended for the Supplemental Register. The USPTO will then examine the application, considering factors such as descriptiveness, potential confusion with existing marks, and compliance with statutory requirements.

Advantages of the Supplemental Register

While the Supplemental Register does not offer the same level of protection as the Principal Register, it provides several significant benefits:

Federal Protection

Registration on the Supplemental Register grants the trademark owner the right to use the ® symbol, indicating that the mark is federally registered. This can serve as a deterrent to potential infringers and offers a certain level of legitimacy and credibility to the mark.

Basis for Foreign Registration

A mark registered on the Supplemental Register can serve as a basis for obtaining trademark registration in foreign countries. This is particularly valuable for businesses that operate internationally or plan to expand their operations abroad.

Right to Bring Legal Action

Owners of marks on the Supplemental Register have the right to bring legal action in federal court against infringers. While the scope of protection is more limited compared to marks on the Principal Register, this legal recourse is a significant advantage for trademark owners.

Potential to Achieve Principal Register Status

Over time, a mark on the Supplemental Register may acquire distinctiveness through continuous use in commerce. If this occurs, the mark may become eligible for registration on the Principal Register. This process, known as “secondary meaning,” involves demonstrating that the mark has become distinctive in the minds of consumers.

Use in Opposition and Cancellation Proceedings

While marks on the Supplemental Register cannot be used to oppose the registration of a new mark, they can be cited as a basis for cancellation of a Principal Register mark if there is a likelihood of confusion. This provides a strategic advantage in protecting the mark against subsequent registrations.

Limitations of the Supplemental Register

Despite its benefits, the Supplemental Register has several limitations that trademark owners should be aware of:

No Presumption of Validity

Unlike marks on the Principal Register, those on the Supplemental Register do not enjoy a presumption of validity. This means that the burden of proof in legal disputes may fall more heavily on the trademark owner to demonstrate that their mark is valid and enforceable.

Limited Deterrent Effect

While the use of the ® symbol provides some deterrence, marks on the Supplemental Register may not be as effective in discouraging potential infringers compared to those on the Principal Register. This is due to the lower level of protection and the lack of certain legal presumptions.

No Automatic Right to Incontestability

Marks on the Supplemental Register do not have the ability to achieve incontestable status. Incontestability is a status that can be granted to marks on the Principal Register after five years of continuous use, providing stronger protection against challenges to the mark’s validity.

Reduced Scope of Protection

The scope of protection for marks on the Supplemental Register is narrower than that for marks on the Principal Register. This means that the likelihood of successfully preventing others from using similar marks may be lower.

Limited Use in Opposition Proceedings

Marks on the Supplemental Register cannot be used as the basis to oppose the registration of a mark on the Principal Register. This limits the ability of trademark owners to proactively protect their marks from potentially conflicting registrations.

Practical Implications for Trademark Applicants

Strategic Use of the Supplemental Register

For businesses with descriptive marks or those that face challenges in achieving Principal Register status, the Supplemental Register offers a valuable alternative. It allows trademark owners to secure federal registration while building the distinctiveness of their mark over time. This strategy can be particularly effective for startups or new brands that are still establishing their market presence.

Monitoring and Enforcement

Trademark owners with marks on the Supplemental Register should remain vigilant in monitoring the marketplace for potential infringers. Given the limitations of the Supplemental Register, proactive enforcement is crucial to maintaining the value and integrity of the mark. This may involve regular searches, watching services, and timely action against infringers.

Transitioning to the Principal Register

As a mark on the Supplemental Register gains recognition and distinctiveness, trademark owners should consider transitioning to the Principal Register. This involves providing evidence of secondary meaning to the USPTO, demonstrating that the mark has become distinctive in the minds of consumers. Achieving Principal Register status provides stronger protection and broader legal presumptions, enhancing the overall value of the trademark.

Global Considerations

For businesses with international ambitions, registering a mark on the Supplemental Register can serve as a stepping stone to obtaining trademark protection in other countries. The registration can be used as a basis for filing under the Madrid Protocol or other international trademark agreements, streamlining the process of securing global trademark rights.

Case Studies and Examples

Descriptive Marks That Gained Distinctiveness

Several well-known trademarks started as descriptive marks on the Supplemental Register before gaining distinctiveness and transitioning to the Principal Register. For example, the mark “Bank of America” was initially descriptive, as it merely described a bank operating in America. However, through extensive use and marketing, the mark acquired distinctiveness and achieved Principal Register status.

Geographically Descriptive Marks

A geographically descriptive mark like “Napa Valley” for wines may initially be registered on the Supplemental Register. Over time, as the brand becomes synonymous with high-quality wines from the region, it may acquire distinctiveness and be eligible for the Principal Register. This process involves demonstrating that consumers associate the mark specifically with the brand, rather than just the geographic location.

Surnames and Secondary Meaning

Surnames like “Ford” or “Dell” may initially lack distinctiveness and be placed on the Supplemental Register. However, as these names become associated with specific companies and products, they can acquire secondary meaning. For example, “Ford” is now strongly associated with the automobile manufacturer, rather than just being a common surname.

The Role of the USPTO in Administering the Supplemental Register

The USPTO plays a critical role in administering the Supplemental Register, ensuring that it serves its intended purpose of providing federal protection to marks that may eventually acquire distinctiveness. The examination process for Supplemental Register applications is similar to that for the Principal Register, with examiners assessing the descriptiveness, potential for confusion, and compliance with legal requirements.

Examination Process

The examination process for the Supplemental Register involves a thorough review of the trademark application by a USPTO examiner. The examiner evaluates whether the mark is eligible for the Supplemental Register, considering factors such as descriptiveness, geographic significance, and the potential for confusion with existing marks. If the examiner determines that the mark is not eligible, the application may be rejected, or the applicant may be given the opportunity to amend the application.

Post-Registration Maintenance

Once a mark is registered on the Supplemental Register, the trademark owner must maintain the registration by filing periodic maintenance documents, similar to the requirements for the Principal Register. These include the filing of a Declaration of Use between the fifth and sixth years after registration and renewal filings every ten years.

Challenges and Appeals

Trademark owners who face challenges or rejections during the application process for the Supplemental Register have the right to appeal the decision. The appeal process involves presenting arguments and evidence to the Trademark Trial and Appeal Board (TTAB), which reviews the case and makes a determination.