Enforcement of Descriptive Mark without Acquired Distinctiveness?


In a case divorced from the usual battle over priority of use of a mark, the U.S. Trademark Office has just cancelled a Supplemental Registration for the mark MEN'S DIVORCE based on a challenge by the prior user of MEN'S DIVORCE LAW FIRM, both for legal services. The Supplemental Register is reserved for marks that are merely descriptive of the associated goods and services that have not yet "acquired distinctiveness" and are therefore ineligible for registration on the Principal Register.

Essentially, this was a battle between two users of a descriptive mark, where the junior user was the first to seek registration. What makes this case unusual is that the prevailing challenger was not required to demonstrate acquired distinctiveness in its merely descriptive mark MEN'S DIVORCE LAW FIRM. Citing a 1987 Federal Circuit decision, the U.S. Trademark Office ruled that acquired distinctiveness is required only when challenging a mark registered on the Principal Register, and not the Supplemental Register. The Office said it would be "anomalous" if the owner of the Supplemental Registration were allowed to prevail, considering the challenger's prior use—even though the challenger itself had not established any protectable rights by demonstrating acquired distinctiveness.

Thus, no matter how the Office had ruled, the results would be somewhat anomalous. Cancelling the registration without first requiring the challenger to demonstrate acquired distinctiveness in its descriptive mark allows, somewhat oddly, at least some type of enforcement in the absence of rights in the mark. On the other hand, denying the challenge would allow, also somewhat oddly, the junior user the benefits of the Supplemental Registration, such as the right to use the ® symbol. The Office's ruling favors prior use of a descriptive term over prior registration, even in the absence of acquired distinctiveness.

Perhaps what helped to tip the scales is that the junior user's Supplemental Registration had been cited by an Office examiner against the challenger's own application for MEN'S DIVORCE LAW FIRM & Design. The citation of such Supplemental Registrations—by definition for marks for which acquired distinctiveness has not been shown and which are therefore not protectable—is itself rather anomalous, and perhaps consideration should be given to doing away with this practice.