The "Supplemental trademark register" is a classification of trademarks unique to the United States, designed specifically to offer some of the benefits of normal "Principal register" marks to those that the United States Trademark Office determines are not currently sufficiently distinctive to serve as trademarks, but are (with use) capable over time of acquiring distinctiveness sufficient to qualify as a trademark. Because there is a legal presumption of "acquired distinctiveness" after five years of continuous use, the Supplemental register effectively serves as a kind of warehouse for trademarks that the owners want to be able to assert rights in, and possession of a Supplemental registration itself can help in supporting a later application on the Principal trademark register, with its superior bundle of protections and presumptions.1 Within the community of trademark attorneys in the United States there is a lively debate about whether the Supplemental trademark register means anything at all. Owners of Supplemental registrations do share one very important advantage with holders of Principal registrations: when another party applies to register a mark that The Trademark Office examiner views as confusingly similar to it, the Office will refuse the later-comer's application on the basis of likelihood of confusion. It is that advantage that was the basis a recent Trademark Trial and Appeal Board case, although, as we will discuss below, it did not quite work out as expected for the owner of the Supplemental registration. State Permits, Inc. v. Fieldvine, Inc. Cancellation No. 92075095 (TTAB August 15, 2024)
In order to better understand why descriptive marks end up on the Supplemental register and the challenges for trademark owners that can follow from that, it makes sense to remind ourselves of what a trademark is in the first place. A trademark is any word, phrase, design, or combination of these features, or almost anything at all that a human could perceive (such as sound, color, and even fragrance) that (i) identifies goods or services as coming from a unitary source, and (ii) distinguishes goods or services from the goods or services of someone else. Trademark protection rubrics were initially not just a mechanism to benefit the owner, but also to make sure that consumers would be able to rely on the quality of goods and services offered under a given trademark. We do not know when trademarks in the modern sense emerged, but it is believed that one of the earliest uses was by Roman swordsmiths, which is not surprising; given the amount of fighting Roman soldiers were constantly engaged in, it was important to have the best you could afford. Just as a counterfeit airplane part might cause significant issues with airplane safety, a counterfeit sword might well fail the owner at a critical time. Other likely earliest marks were associated with alcoholic products, mostly ale or beer (not surprising, really, given how particular people can be about their favorite brand, even today!). The Bass red triangle is the oldest registered trademark in the United Kingdom, and famous brewer Stella Artois claims use of its name to 1366.
Thus the Supplemental register has at its center a paradox: it is designed for trademarks that are in use but currently lack sufficient distinctiveness to serve as trademarks. Since a trademark is definitionally something that has the capacity to distinguish source of goods and services from other marks, it appears that the Trademark Office is conferring upon certain highly descriptive word combinations some sort of "junior trademark status". Is it worth even attempting to get a Supplemental registration for a mark that we know is too descriptive to register on the Principal? And within the Trademark Office, how do they treat disputes involving Supplemental registrations?
Last week, the Trademark Trial and Appeals Board issued a ruling in a titanic battle between the owners of PERMITS.COM and PERMIT.COM that illustrates some of the unique challenges faced by owners of trademarks on the Supplemental register. State Permits, Inc. v. Fieldvine, Inc., Cancellation No. 92075095 (August 16, 2024) [precedential]. In this ruling, the Board granted cancellation of a Supplemental registration where there were dueling claims of acquired distinctiveness. Petitioner State Permits (the "Challenger") had itself applied to register PERMIT.COM on the Principal register, relying on a claim of "acquired distinctiveness" and been refused because of the prior Supplemental registration owned by Respondent Fieldvine (the "Registration Owner") for PERMITS.COM. In response, using a time-honored strategy, the Challenger filed to cancel the Registration Owner's blocking mark on the basis that the Challenger's prior first use of PERMIT.COM for construction permitting services had created trademark rights in the term in the field such that there was likelihood of confusion with the Registration Owner's PERMITS.COM and, based on prior rights, the Registration Owner's mark should be cancelled.
In cancellation proceedings involving registrations on the Principal register, a petitioner must prove they have proprietary rights in the mark relied upon, that there is likelihood of confusion in the marks' coexistence, and that their use was prior to that of the mark they are challenging. Cases involving Supplemental registrations on the other hand, raise difficult questions about how to assess likelihood of confusion between marks, since the disputes involve words that people are using as trademarks but may have no current trademark significance, as normally needed to establish trademark rights.
In State Permits v. Fieldvine, the parties brought forth reams of evidence and declarations submitted by both parties in mutual attempts to prove the acquired distinctiveness of the involved marks for each party's' services. Assuming the standard Dupont test for likelihood of confusion would be applied, whichever party could prove its mark had acquired distinctiveness before the other party (in other words, establishing priority) would win. Because a Supplemental registration does not itself establish such rights, the parties were effectively battling over whether each party's use in the market (common law use, in other words) had conferred the acquired distinctiveness and, in particular, whether the Registration Owner's use, along with its Supplemental registration, conferred such rights superior to whatever rights the Registration Owner possessed.
Each party accepted in their briefing that the word PERMIT or PERMITS with the generic top-level domain (gTLD) attached, "constitute[d], at the very least, a descriptive and non-inherently distinctive term in connection with their services" and that they were functionally identical. Rather than being helpful in establishing distinctiveness, however, the Registration Owner's registration on the Supplemental register constituted an admission that, at least as of the registration date, PERMITS.COM was merely descriptive. And, because the Challenger's application to register PERMIT.COM on the Principal register was accompanied by a declaration of acquired distinctiveness under Section 2(f), they had also conceded that the mark was not inherently distinctive.
In its opinion, the Board first found that both marks were "highly descriptive" of the parties' services: "the term PERMIT, in each mark, describes the most important characteristic or end goal of the identified services, namely, assisting others in obtaining construction permits." The .COM was of no help to either party, as it was "a non-source-identifying generic top-level domain (gTLD) that merely indicates an Internet address for use by a commercial, for-profit organization." Because of the nature of the marks, therefore, the Board found that "the commensurate burden of proving that it has acquired distinctiveness for either party "[was] heavy."
The Challenger in seeking cancellation submitted just the sort of evidence that any trademark practitioner would regard as excellent evidence of acquired distinctiveness. This included proof of hundreds of thousands of dollars of ad spend, nearly 50 million dollars in revenue from its business, and multiple declarations from customers that its mark was recognized in the construction business. Nonetheless, the Board concluded that the Challenger had failed to meet the very high bar required to establish distinctiveness for such a descriptive mark. The Board found the Registration Owner's evidence unimpressive, but since the Challenger was not able to show acquired distinctiveness, neither party's offerings were sufficient to overcome that burden.
However, the board did recognize that the Challenger had established trademark-type use of the mark as early as in 2013 of the sort that met the test set forth in Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987), that where neither party could establish proprietary rights, the junior user would still not be entitled to registration of a descriptive term on the Supplemental Register. The Board here then found that since the Challenger "first used PERMIT.COM in 2013 and [the Registration Owner] then used PERMITS.COM in 2018, five years later, "we [] find it would be an 'anomalous result' if, in view of our finding of a likelihood of confusion, [the Registration Owner] is permitted to keep its Supplemental Register registration for PERMITS.COM, in the absence of a showing of acquired distinctiveness and in the face of [the Challenger's] prior use of PERMIT.COM." Accordingly, the [Challenger] need[ed] only be the prior user" to prevail on its likelihood of confusion claim. And so they granted cancellation of Registration Owner's Supplemental registration of PERMITS.COM. Uncertain still is where that might leave the Registration Owner and Challenger in terms of rights to use their marks. TTAB decisions do not have a direct impact on use of the mark – they are only concerned with the more academic exercise of which marks may be registered by whom. It seems likely that the Challenger may now obtain a Supplemental registration of its own, which they could presumably do by amending the application that led to the cancellation.
Takeaways
Trademark lawyers universally advise that those who offer goods and services in commerce avoid this kind of trouble and expense by choosing strong trademarks, ones that are distinctive and not descriptive. Not only is it more difficult to enforce descriptive trademarks against other users, but because it is so tempting to use descriptive language in trademarks, there are many descriptive trademarks in every field. Accordingly, the more one uses descriptive language, the more likely it is that someone else has already adopted it before one got there. So, take the time and bear the cost at the very beginning of a new venture to choose (i) distinctive marks that are (ii) not in use by other people. If you offer coffee, for example, and you feel strongly that you want the (generic) word coffee as part of your trademark, you must use other distinctive elements and language in the mark to avoid trouble involving the inevitable many other uses of "coffee" for selling "coffee". If you are not sure whether a mark you are considering is highly descriptive there is a simple test. Considering the goods/services for which you want to use the mark, ask yourself "what is it?" or "what are they?" The closer the answer to that question is to the trademark, the more descriptive it is. And, as always, once you settle on a favorite mark or marks, you should send them to your friendly neighborhood trademark attorney for clearance. Yes, it costs money at the outset, but it is money well-spent to avoid potentially enormous costs later.
Footnote
1 Unlike Supplemental registrations, Principal registration confers the valuable legal presumptions of validity, ownership, and exclusive right to use the mark throughout the United States and such marks may be registered with U.S. Customs and Border Protection which may then prevent the importation of infringing goods bearing the mark. Both Principal and Supplemental registrations confer the right to use the federal trademark registration symbol ®, being part of the USPTO database of registered and pending trademarks (which provides public notice to anyone searching for similar trademarks) and permits the owner to file trademark infringement complaints in federal court.
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