Why Bother with the Supplemental Register?

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The United States Patent and Trademark Office (USPTO) maintains two different registers for trademarks: the Principal Register and the Supplemental Register.

To be eligible for registration on the Principal Register, certain marks, such as descriptive marks, surnames, geographic terms and certain types of trade dress, must acquire “secondary meaning.”  “Secondary meaning” means that public primarily sees the mark as identifying the source of the product rather than the product itself.  Registration on the Principal Register gives a mark’s owner several benefits, including:

  • Presumptions of ownership and validity;
  • Constructive notice to others of ownership;
  • The right to request that U.S. Customs exclude infringing goods from import;
  • The ability to claim “incontestable” status after five years of registration; and
  • The ability to obtain certain monetary and equitable relief in an infringement action.

Marks that are actually in use in the United States, but that do not qualify for the Principal Register because they have not yet acquired secondary meaning, may be registered on the Supplemental Register. As you might expect, registration on the Supplemental Register does not provide the same protection as registration on the Principal Register. For example, registration on the Supplemental Register does not create a presumption of ownership or validity; give others constructive notice of ownership; support a later claim of incontestability; imply an exclusive right to use the mark; or allow the mark’s owner to request that products bearing the mark be excluded from import into the United States.

So why bother with the Supplemental Register? The primary benefit of a registration on the Supplemental Register is that a subsequent application for a confusingly similar mark for related goods may be refused by the USPTO. The owner of a Supplemental Registration may also use the registered ® symbol on the products listed in the registration. Further, a registration on the Supplemental Register allows the owner to register the mark in other countries that offer reciprocal trademark rights. And, in the event that a Supplemental Registration’s owner is successful in an infringement action, the owner may be entitled to certain monetary and equitable relief that might otherwise be unavailable.

Given the relative advantages of ownership of a registration on the Principal Register, an applicant should always seek registration on the Principal Register first. But, if the USPTO refuses registration for lack of secondary meaning, an applicant should consider amending the application to the Supplemental Register to ensure the protections discussed above. Keep in mind that if a mark’s owner believes that the mark registered on the Supplemental Register has acquired distinctiveness, a new application for registration on the Principal Register is required.

Conkle, Kremer & Engel assists companies in all aspects of intellectual property protection, including U.S. and international trademark registrations and enforcement of trademark rights.

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The Conkle Firm’s California Pavilion Lounge is Open for Business

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Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim have set up shop in the CK&E Lounge at the California Pavilion at Cosmoprof Bologna.  The California Pavilion, whose theme is “California, A State of Beauty,” is located at Hall Number 30, Stand Number E28-F31 & E31-D34.  The California Pavilion hosts several up and coming California-based beauty businesses that participated in the Beauty Industry Market Access (BIMA) program run by the Center for International Trade Development (CITD).  CITD sponsors California Pavilions at Cosmoprof events to advance international trade for beauty businesses operating in California.  CK&E attorneys including Mark and Kim are proud to have been invited to offer their legal expertise and practical experience to beauty industry participants looking to expand in overseas markets.  At the California Pavilion in Cosmoprof, BIMA participants are able to put their training to its optimum use – growing their international presence and trade.

Simon Smeke and Emilio Smeke of Daily Concepts, with Mark Kremer

Simon and Emilio Smeke of Daily Concepts, with Mark Kremer, at California Pavilion

Israel Segal of Free Your Mane, with Mark Kremer at California Pavilion

Mark Kremer with Israel Segal of Free Your Mane, at California Pavilion

 

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Getting Ready for Cosmoprof Bologna

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Beauty product manufacturers are busy readying their booths for the start of Cosmoprof Bologna.  Here, American International Industries puts the finishing touches on displays of some of its many popular product lines.  In all, more than 2,400 exhibitors will participate in this 48th annual Cosmoprof Bologna event.

Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim will be at the California Pavilion to help clients take full advantage of the unique opportunities to establish and build overseas markets and build strategic alliances. Email them to arrange a meeting at the California Pavilion, or just stop by – they’re at Hall 30, Stand No. E28-F31 & E31-D34.

 

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The Conkle Firm is Appearing at Cosmoprof Bologna

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Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim are now attending Cosmopack and Cosmoprof Bologna, in conjunction with the California Pavilion, from March 19-23, 2015.  Mark and Kim are there to help clients expand their businesses internationally.  They will consult with clients about their concerns, including trademark registration and brand protection, manufacturer-distributor relations, regulatory compliance and more.  Mark and Kim would be glad to meet with prospective clients who are interested in developing their worldwide reach.  Visit their linked pages and contact them by email to arrange a meeting at the CK&E lounge, located at the California Pavilion, or for a bite at one of Bologna’s incredible restaurants.

 

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The Conkle Firm in BIR Article on Cosmoprof Asia 2014

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Conkle, Kremer & Engel attorneys John Conkle and Kim Sim contributed to the January 2015 Beauty Industry Report coverage of Cosmoprof Asia 2014.  The BIRonline article places special focus on the participants in the California Pavilion sponsored by the California Trade Alliance.  Many participants in the California Pavilion were graduates of the Beauty Industry Market Access (BIMA) program, in which CK&E attorneys proudly participate to help California beauty industry members expand their business into international markets.

 

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California Pavilion at Cosmoprof Asia to Host Visit by U.S. Consul General

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Conkle, Kremer & Engel is pleased to announce that Clifford A. Hart, Jr., the United States Consul General for Hong Kong and Macau, is scheduled to visit the California Pavilion at Cosmoprof Asia on November 12, 2014.  CK&E attorneys John Conkle and Kim Sim will attend Cosmoprof Asia in conjunction with the California Trade Alliance, which sponsors the California Pavilion, and they plan to be available to meet with the Consul General.  CK&E attorneys work with clients to facilitate their international business needs, from manufacturer-distributor relationships and brand protection to government relations and regulatory compliance.  If you are attending Cosmoprof Asia this year, stop by and visit the California Pavilion – it will be time well spent.

 

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The Conkle Firm Will Attend Cosmoprof Asia November 12-14, 2014

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Conkle, Kremer & Engel attorneys John Conkle and Kim Sim will attend the Cosmoprof event for the Asia Pacific region in Hong Kong on Nov. 12-14, 2014.  Cosmoprof Asia will feature more than 2,350 exhibitors in the beauty industry, and expects more than 64,000 visitors from all over the world.  There will be 22 national and group pavilions.  Given the prominence of California’s personal care product industry, CK&E is proud to attend the Hong Kong event in association with the California Pavilion organized by the California Trade Alliance.  CK&E will meet with clients and correspondent counsel to facilitate business between manufacturers, distributors and vendors in the Asia Pacific region and the United States, with particular emphasis on California businesses.  Brand protection and distributor relations are always a major concern when doing business between the U.S. and Asia, and CK&E attorneys are there to help.  If you will be attending Cosmoprof Asia this year, please let us know and we will try to make arrangements for a meeting at the event.

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The Conkle Firm Will Sponsor and Moderate Panel at Counterfeiting & Brand Protection Summit in New York

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John Conkle of the Conkle, Kremer & Engel will moderate a panel presentation at the 13th Anti-Counterfeiting & Brand Protection Summit, on October 1, 2014 in New York City.  The title of the presentation will be Combining Forces:  Coordination of Public and Private Sectors against Pirates and Counterfeiters.  The panel will consist of preeminent experts on effective enforcement of civil and criminal anti-counterfeiting laws:  Marc Misthal (Gottlieb, Rackman & Reisman LLP), James T. Hayes Jr. (Special Agent in Charge, ICE Homeland Security Investigations, New York Field Office), and Jodie Kane (Chief of Rackets Bureau of the New York County District Attorney’s Office).

Confronting product counterfeiters can be an expensive, labor intensive and sometimes frustrating task, particularly when undertaken as a solo effort.  The panel sponsored and moderated by CK&E will highlight strategies for combining the strength of private enforcement and available public sector resources to combat counterfeiters using all available tools.  The panel will assess when and how to use civil resources in partnership with criminal enforcement for the most effective and cost-effective assault on product counterfeiters.  The panel will address practical steps to best leverage the strengths and resources of both arms against the scourge of counterfeiters, illustrating points with real world experiences.

Join us and learn how to get the most bang for your brand protection buck in the battle to defeat counterfeiters.  CK&E is proud to again sponsor this important brand protection event.

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The Conkle Firm Will Attend INTA’s Innovation and Internet Governance Conference

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On September 18-19, 2014, Conkle, Kremer & Engel lawyer Zachary Page will attend the International Trademark Association’s “Internet, Innovation and ICAAN: The Evolving Landscape of the Net” conference in San Francisco. This INTA program will cover issues related to the interplay between trademark owners and new developments in the management of the Internet, including new generic top-level domains (gTLDs), changes to the WHOIS domain name directory system, management of intellectual property rights in social media, and other shifts that impact the way owners’ protect their trademarks online.

The conference features speakers from leading companies in the technology industry, including Google, Facebook and Twitter, as well as representatives from federal and global regulatory organizations, such as the World Intellectual Property Organization (WIPO), U.S. Department of Commerce and the Internet Corporation for Assigned Names and Numbers (ICANN).

Every business is affected by developments regarding the Internet.  CK&E participates in important industry conferences of INTA and others to stay in the forefront of developing issues affecting the firm’s clients.  Check back for blog post updates from the conference to stay abreast of innovations and changes in governance and brand protection on the Internet.

 

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Manuel Noriega and Lindsay Lohan have No Doubt about their Right of Publicity

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What do Manuel Noriega, Lindsay Lohan and the rock group No Doubt have in common? All of them have sued videogame makers for infringement of their rights of publicity. On July 15, 2014, Manuel Noriega sued videogame maker Activision Blizzard in Los Angeles Superior Court when his name and animated likeness were included in the videogame Call of Duty: Black Ops II. Less than two weeks earlier, Lindsay Lohan filed a Complaint alleging that her likeness was used, under a pseudonym of “Lacey Jonas,” in the Rockstar Games videogame Grand Theft Auto V. No Doubt alleged that Activision exceeded the consent it gave for use of band members’ likenesses as avatars in the videogame Band Hero.

These claims seem to be emblematic of a recent upswing in claims of violations of the “right of publicity”.  One prominent example is Davis v. Electronic Arts, a case on behalf of some 6,000 retired pro football players who are suing Electronic Arts over use of their identities in the Madden NFL video game series.  In arguments pending in the Ninth Circuit Court of Appeal, Electronic Arts claims First Amendment protection for claimed “transformative use” of the players’ images.  Even if that argument were successful, it will not likely be of much help to others who simply use a photograph or other unadorned likeness of an individual.

California and most other states recognize that a person has a right to protect his or her name, likeness, signature, voice and other identifying aspects of personae from commercial exploitation without consent. The right of publicity protects not just photographs but all forms of likenesses, including animated versions of people in videogames. The right of publicity is a type of intellectual property – in some ways analogous to (but not the same as) a trademark. An important point to understand is that the right of publicity is not ordinarily precluded simply by ownership or license of the copyright in the image – even if you took a photo of Lindsay Lohan yourself and you own the copyright in that photograph, that in itself generally does not mean you can use it in an advertisement to sell a product without Lindsay Lohan’s consent.

The right of publicity is distinct from rights protecting against slander or defamation – there is no requirement that a person’s reputation has been harmed in any way, or that he or she ever had a positive reputation. Manuel Noriega is probably best known as a former leader of Panama who was deposed, tried and convicted of drug trafficking, racketeering and money laundering. Nonetheless, Manuel Noriega has the same right to prevent others from commercially exploiting his name and likeness as anyone.

An important and often overlooked aspect of the right of publicity is that it is a right held by everyone – not just celebrities. While celebrities presumably may command more money for the commercial use of their identities, everyone has the same right to protect his or her name from commercial exploitation without consent, regardless of previous anonymity.

This is a particularly important lesson for businesses that might be inclined to scour the Internet, copy a photograph of some unknown model and use it in advertising or packaging. In addition to the risk that unauthorized copying and use might violate a copyright in the photo, such unauthorized use for commercial promotion runs a strong risk of violating the model’s right of publicity and giving rise to a claim for damages. Even a business that has ordered a photo of a professional model specifically for use in advertising or packaging would do well to check whether the model signed a release that covers the particular use, because model releases can differ in scope, duration and effect.

Conkle, Kremer & Engel has been involved on both sides of the right of publicity – defending actions by models against companies who thought they had sufficient releases of the models’ rights of publicity, and asserting models’ rights to be compensated for the commercial value of their likenesses. CK&E attorneys stay current on the developing law of the right of publicity, which is a quickly expanding area of law affecting everyone from manufacturers and marketers to models, celebrities and ordinary people.

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