PRINCIPAL VS. SUPPLEMENTAL TRADEMARK REGISTER DIFFERENCES

Within the United Stated Patent and Trademark Office, there are two separate trademark “registers” that exist, namely the Principal and the Supplemental.  Typically when an applicant files a new trademark application, that application when ultimately approved and issued is defaulted to be on the Principal Register.  However, under some circumstances during the prosecution of the application, the examiner may recommend, or the applicant may have to voluntarily amend the application to the Supplemental Register.  Generally, “descriptive” marks are not entitled to the Principal register and instead must go on the Supplemental Register.

The question becomes what is the difference between the two registers?  The Principal Register is thought to be stronger as it provides several advantages and presumptions, while the Supplemental does not.   The chart below sets forth those differences:

Principal Supplemental
Provides protection for “distinctive” trademarks Provides protection for only “nondistinctive” trademarks
Presumption of validity No presumption of validity, therefore requiring a litigant to prove the validity of the trademark
Presumption of ownership, and provides constructive notice so as to eliminate an infringers good faith defense No presumption of ownership or constructive notice
Can later become “incontestable” by filing a Section 15 affidavit Cannot be incontestable
Can record with the United States Customs Services to prevent the importation of counterfeits Cannot record with the United States Customs Services
Madrid Protocol applications can be based on principal register trademarks Cannot file Madrid Protocol applications based off of a supplemental register trademark
Can initially file an application on an “intent to use” basis Supplemental application cannot utilize an “intent to use” filing basis, rather it must be used in commerce

 

Given the disadvantages with the Supplemental register, why would an applicant amend their application to the Supplemental Register?  As stated above, “descriptive” marks must go on the Supplemental Register.  What typically occurs is an applicant will initially file a descriptive mark on the Principal Register, and later during the prosecution of the application the examiner will reject it on the grounds that the mark is “merely descriptive”.  As such, the applicant in some cases can overcome the rejection by amending the application to the Supplemental Register.  In other cases, even if the examiner believes a mark is descriptive, the applicant may argue that it has achieved acquired secondary meaning and therefore entitled to remain on the Principal Register.  While there are disadvantages to the Supplemental Register, there are several advantages that it does provide compared to not having any registration, such as:

  • Allows for a lawsuit for trademark infringement to be brought in Federal Court, just as a Principal registered mark would;
  • 3rd parties cannot register a confusingly similar trademark on the Principal or the Supplemental Register;
  • Registrants of Supplemental trademark can still use the ® notice;
  • After the trademark has been used and registered on the Supplemental Register for five (5) consecutive years, the registrant can reapply on the Principal Register.

Blac Chyna Trademark Opposition with the Kardashians

Hollywoodlife.com recently asked us questions in an interview regarding Blac Chyna’s attempt to utilize the Kardashian name in a trademark.  It turns out the Kardashian family is not too keen on soon to be relative, Blac Chyna using the family name for business purposes. Blac Chyna is set to marry Rob Kardashian in 2017, and just recently filed an “intent-to-use” trademark application for “ANGELA RENEE KARDASHIAN” connected to advertising and entertainment services. While the trademark office (United States Patent and Trademark Office) did not have an issue with the application and issued a Notice of Publication, the various Kardashian business enterprises (Khlomoney Inc., 2Die4Kourt, and Kimsaprincess Inc) did and has filed an Notice of Opposition with Trademark Trial and Appeal Board preventing her from getting it.

While Blac Chyna will eventually become a Kardashian legally in her personally life via marriage to Rob (assuming she legally changes her name), her attempts to use the name for business is a different story. The Kardashaian clan essentially does not want her to utilize the Kardashian name in connection with any similar business endeavor that they are involved because they feel it will cause confusion and dilution of the Kardashian name. In fact, the opposition states “[Blac Chyna] is deliberately seeking to profit from the goodwill and popularity of Opposers’ KARDASHIAN Marks.” The have no less then 60 trademarks with the trademark office. In regards to her timing, while filing later after she legally changes her name would provide her with additionally support, however, it is not that significant as it did not make a difference to the trademark office as the trademark office conditionally approved her trademark.

Cohen IP Law Group, P.C. named Trademark Infringement Law Firm of the Year in California 2016

Cohen IP Law Group, P.C. is proud to announce that it has been named as the winner of the Boutique category – Trademark Infringement Law Firm of the Year in California – 2016 by Global Law Experts (GLE)
2016 GLE ANNUAL AWARDS WINNERSwww.globallawexperts.com. Over recent months, GLE has conducted its extensive nomination and research process for the 7th Annual Global Law Experts Awards. The shortlisted candidates were judged on client testimonials, key cases, legal rankings, overall reputation, publication contributions, speaking engagements and the performance and standing of teams and individual lawyers.

During the recommendations stage GLE received over 120,000 responses from business directors, in-house legal counsel, independent law firms, high net-worth individuals, bar associations. These recommendations were combined with GLE’s own independent research in order to create a shortlist for each award category.

Hashtags and Trademarks

The Wall Street Journal reported today that trademark applications for hashtags increased exponentially

in 2015. Hashtags are words or phrases that are preceded by the pound symbol (“#”) to classify a topic

of conversation on social media platforms.

Social media platforms like Twitter, Instagram, and Facebook have become essential marketing tools.

Businesses routinely use hashtags as a promotional device on social media to advertise its goods and

services. For example, Nike uses hashtags for its slogans or new products, for example, #justdoit and

#LunarEpic.

The primary purpose of using a trademark is for a business to indicate a source of origin for its goods

and services to the public. Companies that use non-generic and non-descriptive hashtags on social

media would benefit from federal trademark registration in order to limit competitors from using similar

or the same words or phrases as hashtags which could confuse potential consumers.

Businesses have historically filed trademarks for slogans and taglines before the invention of social

media. The trend of filing a trademark for a hashtag is a continuation of the same concept. However, in

most scenarios, a trademarked word slogan would not need a separate registration with a hashtag for

protection. Since “likelihood of confusion” is the test for trademark infringement, Nike’s “Just Do It” is

fully protected from a competitor using “#justdoit” in social media.

Trademark applications that should include the hashtag would be in cases where the hashtag is always

attached to the word or phrase seeking protection, outside social media.

Michael N. Cohen

El Chapo and his Trademarks

Just wrapped up an interview with Noticias 62 about Joaquin “Chapo” Guzman, the notorious drug lord who was recently captured, and trademark issues related to him believe it or not.  Evidently, his family has filed for several trademark applications in Mexico throughout the years, many of which have been rejected by the Mexican Institute of Industrial Property aka the Mexican trademark office.   The rejection was based on Mexico’s trademark law that prohibits the registration of trademarks that are contrary to morality and decency, namely that El Chapo signifies a person who is wanted by the authority for committing various crimes.  However, the Mexican trademark office did allow registration for some of the applications associated with some odd goods and services like “whips and saddlery” and “Christmas trees” among others.

The US has a similar basis for rejections of trademarks that are scandalous or disparaging.  Some of the most notable recent ones are the Redskins issue which I talk about last year and I believe is still ongoing, and the “Slants” trademark which was held to be disparaging but recently overruled and allowed registration by the Federal Circuit finding that the disparagement provision in that case would violate the Slant’s, an Asian rock band, first amendment right.  But with “El Chapo” it’s a bit different because we are talking about a nickname or possible surname if he decides to file for that.  Not sure if that would be held to be scandalous if his family decides to file in the US for similar goods and services as they did in Mexico.  The USPTO hasn’t been exactly consistent about these issues, but in one case an application for “Osama Bong Loadin” was rejected because “[a]ccording to the attached evidence from Google.com, the proposed mark OSAMA BONG LOADIN refers directly to Osama Bin Laden and is thus scandalous because Bin Laden’s actions are synonymous with his name”.

Top Trademark Law Firm Cohen IP Law Group Ranked by IP Today Magazine

Cohen IP Law Group, PC is pleased to announce its inclusion in Intellectual Property Today’s 2015 list of “Top Trademark Firms.”  This marks the firm’s sixth time ranking in the list.  Intellectual Property Today is one of the legal industry’s leading intellectual property publications, focusing on legal issues in patent, trademark and copyright law.  Firms are ranked according to the number of U.S. trademark registrations issued in 2014 where the firm or individual attorney is listed as the legal representative on the registration.

Cohen IP Law Group, P.C. is a premier boutique intellectual property law firm specializing in complex trademark prosecution and litigation matters in addition to other intellectual property transactions and litigation. Our firm has litigated successfully against some of the largest law firms in the world at a fraction of the cost. Michael N. Cohen is highly regarded in the trademark community and has been interviewed by the BBC, The Wall Street Journal, and other news sources to discuss intricate matters of intellectual property.

Marijuana, Trademark Brand Protection for the Cannabis Business

The emerging U.S.cannabis industry is estimated of producing $10.2 billion in the next five years.  This is not entirely surprising as the road to legalization has already been paved withColoradoandWashingtonhaving legalized recreational use of cannabis, while a large number of other states includingCaliforniahave legalized it for medicinal use.  Meanwhile, the Federal government has not yet changed the classification of cannabis as a Schedule 1 substance under the Controlled Substance Act of 1970. The use, possession, sale, cultivation, and transportation of cannabis is still illegal under Federal law.

While the laws regulating marijuana related businesses the changed over the years, startups in cannabis industry have been hitting their stride, and even Wall Street has gotten into the game with several publically traded companies on the scene.  And while the direct industry participants such as dispensaries, processors, growers, and the sale of cannabis itself is at the core of the industry, the ancillary goods and services pose as its lucrative equal.  Just as with any business, intellectual property protection of the goods and services is critical.

Trademark Protection for Marijuana

US trademarks are registered with the United States Patent and Trademark (USPTO) at the federal level, which typically affords the strongest level of protection and enforcement in the US.  Not too long ago for a short period of time, applicants were able to receive issuance of a trademark from the USPTO, of their brand names for strains of cannabis and related goods and services.  However, that window has not only closed, but the trademarks that were previously registered were retroactively removed from issuance following the enactment of US federal laws prohibiting the use of marijuana.  At the current time, attempts to apply for trademarks with the USPTO for cannabis products are denied, mainly in view of the Controlled Substance Act (CSA), 21 U.S.C. ” 810-971.  The typical trademark office action rejection in view of the CSA usually includes language like this:

The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.

As a general guideline, there are some goods and services that fall outside the CSA, such as trademarks for seminars or conferences about marijuana as long as it does not touch upon the distribution or dissemination of how to acquire marijuana.  While the CSA poses a hurdle for most marijuana related trademarks, as stated above it may not in many circumstances.  In the current competitive landscape to obtain IP rights in the cannabis business, obtaining a federal trademark registration is beyond significant, so advice from experienced trademark counsel is worth its weight in gold to be deemed as a serious player in the industry.

Even if the opportunity for a federal registration is foreclosed, there may be other strategies such as the application of a trademark at the state level, while not as strong as a federal registration, still conveys advantages.

Other Forms of IP

In addition to federal or state/common law trademark protection, the US federal patent laws are available to cannabis related inventions without as much scrutiny of running afoul of federal statutes.  While some of the technology in the marijuana industry may be simplistic, there are several untapped areas from technological innovation that fall under the umbrella of utility or design patent protection.