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.
The mark depicted above and at issue in these cases, Registration No. 4,280,977, is described by Spirit in its registration as follows:
[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.
By Jason Sanders and Wendy Stein
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