In
the United States, trademarks can be registered on either the Principal
Register or the Supplemental Register.
The Principal Register is reserved for marks that actually distinguish a mark owner’s goods and services. Registration there offers the full panoply of
trademark rights – including presumptions of validity and exclusive rights to
use. Not all marks can be registered on
the Principal Register. Marks that are
considered “ornamental” such as stitching on clothing, or marks that are
descriptive, based on surname or geographical terms are often sent to the
Supplemental Register when attempts to get them on the Principal Register
fail.
The
Supplemental Register does not provide the presumptions of registration on the
Principal Register, nor does it require the same burdens to be met before a
registration will be issued. Any mark merely
“capable of” distinguishing a trademark applicant’s goods or services may be
registered on the Supplemental Register.
But, registration on the Supplemental Register is not evidence that the
mark actually distinguishes goods or
services. What are the exact benefits of
registration on the Supplemental Register?
Very few courts have opined on this.
See, e.g., In re Bush Bros. & Co., 884 F.2d 569,
570 (Fed. Cir. 1989)(noting the lack of judicial clarity).
A
recent string of court filings claiming infringement of a supplemental
registration presents the possibility that a court will publish a detailed examination
of these registrations in the near future.
On May 16, 2014, Spirit Clothing Company (“Spirit”) filed an action
against Victoria’s Secret Stores, alleging infringement of its supplemental trademark
registration, for a stitching design on dropped shoulder seams and across the chest
and back of a shirt. See Spirit Clothing Co. v. Victoria’s Secret
Stores, LLC et. al., Civ. No. 14-3790 (C.D. Cal.). This is at least the sixth complaint that
Spirit has filed against various companies alleging infringement of this mark.
[A] yoke
stitched with cover stitch details on dropped shoulder seams and a yoke stitched across the chest and back
of the shirt. The drawing shows the word
‘NANTUCKET’ in dashed lines to indicate that such word does not form part of
the mark, but merely indicates placement on the back portion of the mark a
space where wording is presented. The
dashed lines running approximately horizontally across, and vertically in the
dropped shoulder area, do form part of the mark, representing the yoke and
cover stitch details set forth in the description of the mark.
What
is particularly interesting is that the mark was refused registration on the
Principal Register because, according to the USPTO the mark was “merely a
decorative or ornamental feature of applicant’s clothing” and did “not function
as a trademark to identify the source of applicant’s clothing [or] distinguish
applicant’s clothing from that of others.”
The USPTO added that: “consumers would view the applied-for mark as a
decorative or ornamental feature . . . rather than as a trademark to identify .
. . source . . . .” Spirit did not
appear to contest this analysis with the USPTO and instead amended the
application to registration on the Supplemental Register.
While
some of the cases brought by Spirit have appeared to settle and were dismissed
without any significant judicial opinion, four of the cases remain pending in
the Central District of California (along with a declaratory judgment action
pending in Georgia). Because
counterclaims for invalidity and mark cancellation are pending in at least one of
the active litigations, we may see a new court decision concerning not only the
benefits of a supplemental registration, but also the liabilities of acceding
to registration on the Supplemental Register, and the specific showings
necessary to defend, invalidate or cancel a supplemental registration. This type of additional clarity could help
brand owners decide what steps to take when considering registration of a mark
that might get sent to the Supplemental Register.
In the meantime, while brand owners watch
whether the courts will further clarify the protection afforded by supplemental
registrations in the Spirit cases, brand owners should still
consider protecting their IP in other ways, such as seeking registration of
brand names or logos on the Principal Register, filing copyright applications on
any design elements of their goods, and applying for design patents on any new,
original and ornamental (non-functional) designs. These well-understood basic steps should be
followed when possible, regardless of how courts further define the effects and/or
drawbacks of registering on the Supplemental Register.
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