Introduction

What impact, if any, does a federal service mark registration for the stylized logo shown at left have concerning asserted rights to a subset of words recited in that logo, where those words were disclaimed in the registration? If none, does a supplemental registration for the words alone make a difference?

Click here to see image.

On March 27, 2013, Paradise Media Ventures, LLC d/b/a Interactive Media Ventures a/k/a Social Media Marketing University (“Paradise”) filed a two-count complaint in the Northern District of Georgia against Minnesota resident Eric Mills. Count one recites a cause of action for unfair competition, and count two recites an action for violation of the Georgia Uniform Deceptive Trade Practices Act (“GUDTPA”), both counts predicated on Mills’ alleged use of the word mark CERTIFIED SOCIAL MEDIA STRATEGIST.[1] The complaint seeks injunctive and monetary relief, plus costs awardable under GUDTPA.

Paradise’s Trademark Registrations

Though Paradise’s complaint does not assert a cause of action for infringement of a federally-registered mark, it identifies two federal trademark registrations. Below are provided further details concerning these registrations, as they frame legal principles likely to apply in the case.

Paradise is the owner of record of U.S. Service Mark Registration No. 3,900,172 (“the ’172 Registration”), for the composite mark (logo) shown above, for “Education services, namely, providing web based training for certification in the field of social media management.” The ’172 Registration, which issued on January 4, 2011, recites a first-use-in-commerce date of May 15, 2009. During prosecution of the application for registration, a USPTO Trademark Examining Attorney, in an August 22, 2010 Office Action, required the insertion of the following disclaimer now appearing in the ’172 Registration:

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “CERTIFIED SOCIAL MEDIA STRATEGIST” OR “UNIVERSITY” OR “CERTIFIED”, APART FROM THE MARK AS SHOWN.

The ’172 Registration additionally specifies what the registered mark is:

THE MARK CONSISTS OF THE IMAGE OF A SEAL CONTAINING THE WORDS “CERTIFIED SOCIAL MEDIA STRATEGIST SMM UNIVERSITY” AND 3 STARS, WITH A RIBBON CROSSING IT WITH THE WORD “CERTIFIED” APPEARING ON THE RIBBON.

Paradise is also the owner of record of a registration appearing on the Supplemental Register, namely, U.S. Service Mark Registration No. 4,208,089 (“the ’089 Registration”), for the word mark CERTIFIED SOCIAL MEDIA STRATEGIST®,[2] for the same services as those recited in the ’172 Registration. The ’089 Registration, which issued on September 11, 2012, recites a first-use-in-commerce date of March 17, 2012.[3] In a July 3, 2012 Office Action, the USPTO refused registration of that mark on the Principal Register, on the ground that the mark was merely descriptive of the services offered. The Trademark Examining Attorney mentioned the earlier disclaimer of the words comprising that mark in the application leading to the ’172 Registration, and provided the applicant with the option of amending the application so as to seek registration on the Supplemental Register. The following day, the applicant amended the application accordingly.

Complaint Allegations

Paradise alleges that it “has been at the forefront of developing methods for the use and management of Social Media, including training and certifying individuals that use and manage Social Media,” and that it “provides training, certification, and consulting to individuals and companies using Social Media to manage and improve image, perception, visibility, leads, sales and market share.”

According to the complaint, around 115,000 people have completed Paradise’s training and certification program since it began. Paradise states that its work has earned “numerous accolades,” including:

  • Winner of the International Business Awards “Best Global Training Site”
  • “Voted by MASHABLE® as one of the Top Social Media Services for Small Business Globally”
  • “Awarded Social Media Marketer of the Year by the Technology Association of Georgia”

Click here to see image.

The complaint alleges that Mr. Mills operates the National Institute for Social Media (“NISM”) and initially (such as in 2011) used the term CERTIFIED MASTER OF SOCIAL MEDIA to refer to its training program. However, Paradise asserts that in 2012, Mr. Mills, despite having been aware of Paradise’s mark CERTIFIED SOCIAL MEDIA STRATEGIST, decided to use Paradise’s mark to identify NISM’s program, and has since been using that mark. Paradise alleges that such usage “is likely to cause confusion among current students, prospective students, program graduates, educational institutions and businesses that identify [Paradise’s] CSMS certification as an industry standard.”

Applicable Trademark Principles

Below are summarized general principles governing composite marks, trademark disclaimers, and marks registered on the Supplemental Register.

The protection afforded by a federal registration of a stylized composite mark (logo) containing disclaimed matter “may be limited to the stylized form of otherwise unregistrable words,” and “a distinctive configuration of words does not of itself impart registrability to the words standing alone.”[4]

“[T]he disclaimer of certain words in earlier marks does not constitute waiver of the trademark itself, or of a later-registered trademark - a disclaimer is not an acknowledgment of descriptiveness and has no effect on plaintiff’s subsequent registration of [the disclaimed words].”[5] Under the Lanham Act:

No disclaimer . . . shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.[6]

“It is well settled that an applicant may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression which indicates the source of applicant’s goods or services and distinguishes applicant’s goods or services from those of others.”[7]

The Lanham Act accords similar treatment as to the effect of the appearance of a mark on the Supplemental Register: “Registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness,” and such registration does not prevent registration on the Principal Register.[8]

“Unlike registrations on the Principal Register, registrations on the Supplemental Register do not receive some of the advantages extended to marks registered on the Principal Register. Supplemental registration is not prima facie evidence of the validity of the registered mark, of ownership of the mark, or of the registrant’s exclusive right to use the registered mark in commerce.”[9] However, a supplemental registration “enables the registrant to satisfy registration requirements under the trademark laws of foreign countries, enables the registrant to sue for infringement in federal court, and provides useful business information on a readily accessible, central register.”[10]

Since a supplemental registration is not prima facie evidence of validity of the registered mark, the trademark owner must prove that the mark has acquired secondary meaning to maintain an action for infringement or unfair competition.[11]

The case is Paradise Media Ventures, LLC v. Eric Mills, No. 1:13-cv-1003-TWT, filed 03/27/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and assigned to U.S. District Judge Thomas W. Thrash.