Q: Cancellation of descriptive trademark if registration has happened contrary to law? What if there is secondary meaning?
If a descriptive mark has been registered as a trademark contrary to the provisions of subsection (e)(1) of Lanham Act § 2, can it be cancelled afterwards? Can the registration be upheld if it is shown that the mark has in the meanwhile secondary meaning (acquired distinctiveness?)
Sounds like a law school class question.
The answer is always depends.
Consult with an attorney.
When a mark is rejected for being descriptive, the applicant may request the mark to be registered in the supplemental register (as opposed to the principal register). The marks in the supplemental register are typically not enforceable. But if the owner uses the mark for at least five years, the owner may file a new trademark application to register the mark in the principal register. The owner has to provide evidence that the mark has acquired secondary meaning (or acquired distinctiveness). The evidence may include (but not limited to) the amount and manner of advertising, amount of sales, consumer testimony, survey evidence, established place in the market, unsolicited media coverage of the products, the length of the exclusivity of use, etc.
This post is for public information and is not intended as legal advice. Nor does this post establish an attorney-client relationship. Please get consult with your attorney before filing a trademark application.
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