The Trademark Trial and Appeal Board's ("TTAB") recent ruling in Otter Products LLC v. BaseOneLabs LLC held that in determining a likelihood of confusion between trademarks, the significance of a registration on the Supplemental Register differs depending on whether the registered mark is being cited by a trademark examiner (during trademark prosecution) or by the mark's owner (during opposition or cancellation proceedings). When an examiner considers whether an applicant's mark creates a likelihood of confusion with a registered mark, he "does not and cannot question the validity of a mark." In other words, so long as the mark is registered, it may be cited by an examiner to preclude registration of a confusingly similar mark. Conversely, when the owner of a registration on the Supplemental Register opposes or seeks cancellation of an applicant's mark, the owner "must establish the validity of a mark . . . in order to prevail on a claim of likelihood of confusion."
In Otter Products, Otter Products alleged that consumers would confuse BaseOneLabs' IMPACTBAND with Otter Products' IMPACT SERIES, which was registered on the Supplemental Register. Otter Products submitted no evidence to support its rights to IMPACT SERIES, relying solely on its Supplemental Registration. The TTAB dismissed Otter Products' opposition because its Supplemental Registration "is not evidence of ownership, validity, or the exclusive right to use," and Otter Products therefore had not established the validity of the mark as required for its likelihood of confusion claim.
Accordingly, prior to filing an opposition or cancellation, the owner of a registration on the Supplemental Register should be mindful that proof should be gathered, and subsequently submitted, to establish trademark validity. To the extent that proving rights in a mark (i.e., acquired distinctiveness) may be difficult, the owner of a trademark on the Supplemental Register concerned with a confusingly similar trademark application should consider filing a Letter of Protest with the U.S. Patent and Trademark Office prior to the relevant application's publication. Through the Letter of Protest, the owner may advise the relevant trademark examiner of its registration on the Supplemental Register and the reasons that confusion is likely. If the examiner acts on the Letter of Protest, the owner of the registration on the Supplemental Register may prevent registration of a mark without being required to prove the validity of its own mark.
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