LAIPLALAIPLA
LAIPLALAIPLA
  • About
    • About LAIPLA
    • Ambassador Outreach Program
    • Board of Directors
    • Committees
    • Administration
    • Member Firms and Companies
    • Past Presidents
    • Recent Past Presidents
    • Public Service Award
    • Diversity Fellowship
    • Bylaws
  • Events
  • Membership
  • Sponsorship
  • Contact
  • About
    • About LAIPLA
    • Ambassador Outreach Program
    • Board of Directors
    • Committees
    • Administration
    • Member Firms and Companies
    • Past Presidents
    • Recent Past Presidents
    • Public Service Award
    • Diversity Fellowship
    • Bylaws
  • Events
  • Membership
  • Sponsorship
  • Contact

Supplemental Registrations and Acquired Distinctiveness: Did The TTAB Get This Right?

July 8, 2016| in The TTABlog| by John L. Welch

In the SEXSTROLOGY case that I blogged yesterday, the TTAB had this to say (at page 14) about the Supplemental Register:

1. According to the Board, Section 23 of the Trademark Act dictates that “a mark that is registrable on the Principal Register may not be registered on the Supplemental Register.” Is that a correct reading of the Statute?

Section 23 says” “All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … may be registered on the supplemental register ….” But Section 23 does not say that ONLY marks not registrable on the principal register may be registered on the supplemental register.

TERRY NAZON

2. The Board also said, in footnote 8, that registration on the Supplemental Register constitutes an admission that the mark is merely descriptive. Section 27, in pertinent part, says that “registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness.” The Board reads this to mean that acquired distinctiveness must come later, since the securing of a Supplemental Registration is an admission of mere descriptiveness at the time of issuance.

But I read Section 27 as speaking about the time of the registration: i.e, at the time of registration, acceptance of an Supplemental Registration is not an admission that the mark has NOT acquired distinctiveness.

In short, I think securing a Supplemental Registration is an admission only that the mark is not INHERENTLY DISTINCTIVE at the time of registration, not an admission that it is merely descriptive, and so one may later establish that the mark had acquired distinctiveness even before the date of the Supplemental Registration.

What do you think?

This discussion in the SEXSTROLOGY case was probably dictum, since Opposer was unable to prove acquired distinctiveness at any time, and the Board considered the pre-registration evidence “as part of the total picture.”

IP Blog Categories

  • Announcements
  • Events
  • LAIPLA News
  • The TTABlog
  • Uncategorized
  • Wegner's Top 10
  • Wegner's Writings

Archives

Previous

NYIPLA Seminar: “Hot Topics In Intellectual Property Law” – July 20th in NYC

Next

TTABlog Test: Is “CARUSO HOTELS AND RESORTS” Primarily Merely a Surname?


Since 1934, LAIPLA has been educating and connecting members of the local intellectual property legal community

Pages

About 
Events
Membership
Sponsorship
Contact
Privacy Policy

Search
Contact

LAIPLA
1621 W 25th Street
Box 633
San Pedro, CA 90732
Phone: (323) 285-1654
Fax: ( 310) 878-0517
Email: office@laipla.net

© 2025 Los Angeles Intellectual Property Law Association. All Rights Reserved | Website design by Arclight Digital.