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[TM-law]

I've got a mark that was initially refused on the basis that it was not inherently distinctive.  Instead of fighting the refusal, however, prior counsel simply amended the application to the supplemental register.  Right after the mark was amended to the supplemental register, a third party started using the mark.  The third party is now claiming that the mark is not inherently distinctive and that we do not have sufficient use to show secondary meaning. 

I believe the initial refusal was wrong and that it should have been fought all the way to the TTAB.  Is there any way to fight this now that its been registered on the Supplemental Register?  The refusal was back in 09, so we're well past the 6 month deadline to substantively respond.  My understanding is that you cannot amend from the Supplemental Register to the Principal.  So what recourse do we have?  File a new application with the USPTO?

Thanks in advance...

[JSonnabend]

You can make that same argument now, only in the context of your enforcement against the other party.

- Jeff

[TM-law]

You can make that same argument now, only in the context of your enforcement against the other party.

- Jeff

I'm not sure I follow.  I understand that I can make the argument that the mark is inherently distinctive in a district court action.  But even if the court rules in our favor on that issue and finds that the mark was / is inherently distinctive, won't that just be the equivalent of common law use since we do not have a registration on the principal register?  My understanding is that our supplemental registration cannot be amended to the principal register and I don't believe the district court can order a retroactive registration of a mark on the principal register.  If we get a ruling that the mark is inherently distinctive, all that would really do is prevent them from entering our markets - right?  But, since neither party currently has nationwide priority, I would imagine the flip side to this is that they could prevent us from entering their markets.  It doesn't look like our supplemental registration is helping us at all.

I'm at a loss... never encountered this situation before.

[JSonnabend]

I didn't mean to give such a flippant answer.  You are correct that you while you can argue distinctiveness now (inherent or acquired), your supplemental registration does not give you constructive nationwide use of the mark.

There is no way that I'm aware of to go back and re-argue the distinctiveness rejection.

- Jeff