In the SEXSTROLOGY case that I blogged yesterday, the TTAB had this to say (at page 14) about the Supplemental Register:
1. According to the Board, Section 23 of the Trademark Act dictates that "a mark that is registrable on the Principal Register may not be registered on the Supplemental Register." Is that a correct reading of the Statute?
Section 23 says" "All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … may be registered on the supplemental register …." But Section 23 does not say that ONLY marks not registrable on the principal register may be registered on the supplemental register.
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2. The Board also said, in footnote 8, that registration on the Supplemental Register constitutes an admission that the mark is merely descriptive. Section 27, in pertinent part, says that "registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness." The Board reads this to mean that acquired distinctiveness must come later, since the securing of a Supplemental Registration is an admission of mere descriptiveness at the time of issuance.
But I read Section 27 as speaking about the time of the registration: i.e, at the time of registration, acceptance of an Supplemental Registration is not an admission that the mark has NOT acquired distinctiveness.
In short, I think securing a Supplemental Registration is an admission only that the mark is not INHERENTLY DISTINCTIVE at the time of registration, not an admission that it is merely descriptive, and so one may later establish that the mark had acquired distinctiveness even before the date of the Supplemental Registration.
What do you think?
This discussion in the SEXSTROLOGY case was probably dictum, since Opposer was unable to prove acquired distinctiveness at any time, and the Board considered the pre-registration evidence "as part of the total picture."