John L. Welch once again has a great synopsis of a recent Trademark Trial and Appeal Board (TTAB) decision. It highlights another example of the importance of trademark enforcement efforts, which could include trademark cease and desist letters (also referred to as trademark notice letters or trademark threat letters), UDRP arbitration proceedings, and trademark lawsuits or trademark litigation.
In particular, the TTAB decision considered the trademark enforcement efforts, and the fact that the enforcement efforts resulted in the unauthorized parties having stopped using the trademark, as evidence of the trademark applicant’s exclusive right to use PERFECTING SERUM for skin moisturizer.
The board concluded that the trademark, which had previously been registered on the Supplemental Register for being merely descriptive, had acquired distinctiveness (i.e. secondary meaning) so as to qualify for registration on the Principal Register.
This decision reiterates the importance of pursuing trademark registration, even if relegation to the Supplemental Register may occur. For more on the differences between the United States Patent and Trademark Office’s two registers, you should contact a trademark registration lawyer. More importantly, it confirms that enforcement of one’s rights in a trademark are not only criti cal to maintain trademark rights but also critical to establish them.
Ultimately, trademark enforcement efforts should be part of any trademark owner’s mission. However, it is important to understand the limitations surrounding a trademark threat letter, for example, prior to sending. If properly research, advised, and sent, trademark threat letters should be taken seriously by recipients and can be a valuable kind of trademark enforcement.
For more information on trademarks, cease and desist letters and the USPTO;