On December 18, 2012, the Trademark Trial and Appeal Board, in Otter Products LLC v BaseOneLabs LLC, 105 USPQ2d 1252, decided that a Supplemental Register registration for the mark IMPACT SERIES did not establish that the opposer owned a proprietary interest in this mark. See Dec. 18, 2012 Opinion.

The opposition was filed against an application for IMPACTBAND for cellular telephone and handheld computing device covers. Opposer asserted prior use of IMPACT SERIES and ownership of a Supplemental Register registration covering protective cases for interactive, handheld electronic devices, namely portable music players, portable video players, phones and computers. For its evidence, opposer relied solely on its Supplemental Register registration.

Applicant filed a motion for involuntary dismissal under Trademark Rule 2.132 claiming the Supplemental Register registration of opposer was “evidence of nothing” because Supplemental Register registrations are not entitled to any statutory presumptions.

While the Board found that a Supplemental Register registration was sufficient for establishing an opposer’s standing and priority in an opposition, such a registration did not establish a proprietary right in the covered mark – a required element of an opposer’s evidentiary burden.

The Board specifically distinguished the impact of a Supplemental Register registration in an inter partes case versus an ex parte case. In the ex parte context, the Patent and Trademark Office does not and cannot question the validity of a mark in a registration cited against another under Section 2(d). In an inter partes case, the asserter of a Supplemental Register registration must independently prove the ownership and validity of the mark, i.e. that the mark has acquired distinctiveness to the registrant.

Given this result, if the owner of a Supplemental Register registration has questions about its ability to prove acquired distinctiveness, and if it learns in a timely-enough fashion of a problematic application under Section 2(d), it may want to consider the “Letter of Protest” procedure (TMEP §1715; TBMP §215). Likelihood of confusion issue resolutions may typically not be favored in the Letter of Protest process, but this approach may offer more opportunity for success when proof of acquired distinctiveness in an opposition context is uncertain.

Source: Trademark Trial and Appeal Board

This article was prepared by J. Paul Williamson (pwilliamson@fulbright.com / 202 662 4545), Tara Vold (tvold@fulbright.com / 202 662 4657) and Tracy DeMarco (tdemarco@fulbright.com / 202 662 4653).