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Newsletter | May 2014, Issue 2 |
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INTELLECTUAL PROPERTY |
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Supreme Court Rules Distinctiveness May Be Evaluated at Time of Deciding a Scope Confirmation Trial |
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The Supreme Court en banc recently overruled established precedent up to date holding that “even if an entire mark or its composite element had little to no distinctiveness at the time of registration, such portion or entire mark may be considered when determining similarity at the time of deciding a scope confirmation trial, if they acquired well-known status among consumers due to continued use” (Supreme Court Case No. 2011hu3698, decided on March 20, 2014). |
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The above case was a scope confirmation action to determine whether the use of Unistar Co., Ltd.’s mark  (“Subject Mark”) on sneakers fell within the scope of protection of New Balance Athletic Shoe, Inc.’s registration for the mark  (“Registered Mark”) designating umbrellas, sneakers, etc. and first registered in 1984. |
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In its decision, the Supreme Court noted that at the time the Registered Mark was granted registration, the composite elements, ‘ ’ and ‘ ’, lacked distinctiveness. However, due to New Balance’s extensive use of the  portion (“Used Mark”) on its products, the Supreme Court acknowledged that since at least 2009, consumers were well aware of the source of the products bearing the Used Mark. Therefore, the Supreme Court held that at the time of deciding this scope confirmation action, at least the portion of the Registered Mark, which is identical to the Used Mark, had acquired sufficient distinctiveness so that consumers can distinguish the source of the products. |
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Furthermore, the court reasoned that the ‘ ’ portion of the Subject Mark was the main distinctive portion that was conspicuous to consumers, and that there was risk of consumer confusion because the essential portions ‘’ and ‘’ of the compared marks were identical to each other. As such, the Supreme Court held that Unistar’s Subject Mark fell within the scope of protection of New Balance’s Registered Mark. |
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In its prior decisions, the Supreme Court ruled that a portion of a trademark that was previously non-distinctive at the time of registration may not be evaluated as a distinctive portion for purposes of determining a scope confirmation action even if it subsequently acquired secondary meaning. This prior decision has been overruled by the above en banc decision, deciding that the scope confirmation decision is not binding for future trademark infringement litigations or invalidation actions and has limited function only to confirm the scope of a registered trademark, and the registration remains in effect until and unless there is a final and conclusive decision holding the registered trademark invalid. |
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This recent Supreme Court decision is considered to have strengthened protection for trademark registrations which include a portion that has acquired distinctiveness over time. |
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