A registration of a merely descriptive term on the Supplemental Register, which does not require acquired distinctiveness, will impede another party from registering a similar mark on the Supplemental Register or the Principal Register. If other party can demonstrate acquired distinctiveness, however, then the registration on the Supplemental Register may be subject to cancellation, thereby clearing the way for its own efforts to obtain registration on the Principal Register. Theatrical Stage Emps. Union Local No. 2 v. Eaves, 2017 TTAB LEXIS 54, at *13 (TTAB 2017). Such party need not wait until it has acquired distinctiveness in its mark before seeking to clear away the impediment. Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987).

In a precidential decision, State Permits, Inc. v. Fieldvine, Inc., Cancellation No. 92075095 (TTAB Aug. 16, 2024), the Board recently granted a petition for cancellation of Fieldvine's registration on the Supplemental Register for the mark PERMITS.COM for construction permit services based on the prior use of the PERMIT.COM mark by Petitioner State Permits for identical services beginning five years earlier, even though Petitioner State Permits did not prove acquired distinctiveness. 

     Specifically, the parties do not disagree that Petitioner's PERMIT.COM mark is virtually identical to Respondent's registered PERMITS.COM mark. The plural
nature of Respondent's mark does not change this. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); Weidner Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (Applicant's mark SHAPES is “essentially the same mark” as SHAPE).

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     However, to prevail on its likelihood of confusion claim, petitioner must also prevail on its priority claim. See Exec. Coach Builders, Inc. v. SPV Coach Co., 123
USPQ2d 1175, 1199 (TTAB 2017) (priority is “an essential element of any [likelihood of confusion] claim”). Thus, this case is essentially a dispute over priority.

Typically, a plaintiff “must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion” in proceedings challenging registration on the Principal Register. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). 

But, for a registration for a descriptive term on the Supplemental Register, the registrant has "as yet no proprietary rights in a mark." Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987). Thus, where neither party has established proprietary rights, the junior user still will not be entitled to registration of a descriptive term on the Supplemental Register. 

     We have found that Petitioner first used PERMIT.COM in 2013 and Respondent then used PERMITS.COM in 2018, five years later. In accordance with the Books on Tape decision, we too find it would be an “anomalous result” if, in view of our finding of a likelihood of confusion, Respondent is permitted to keep its Supplemental Register registration for PERMITS.COM, in the absence of a showing of acquired distinctiveness and in the face of Petitioner's prior use of PERMIT.COM. As in Books on Tape, Petitioner in this case need not establish that PERMIT.COM has acquired distinctiveness as a source identifier of its services, but need only be the prior user, for purposes of prevailing on its likelihood of confusion claim and its petition to cancel Respondent's registration on the Supplemental Register. 

State Permits had filed the opposition because the PERMITS.COM mark on the Supplemental Register was as a bar to Petitioner's ability to federally register its
PERMIT.COM marks. But the TTAB's finding that State Permits has not proven acquired distinctiveness of "the highly descriptive term PERMIT.COM" likely means that registration of the earlier-used but subsequently-filed PERMIT.COM marks would be limited to the Supplemental Registration for now.