In this article, I summarize allegations in a complaint alleging ownership of the word mark "Certified Social Media Strategist" and list trademark principles likely to be considered as the case progresses in the U.S. District Court for the Northern District of GA.

1. DEVOTED TO
INTELLECTUAL
PROPERTY
LITIGATION &
ENFORCEMENT
Edited by the Law Firm of
Grimes & Battersby
Litigator
MAY/JUNE 2013
VOLUME 19 NUMBER 3

2. MAY/JUNE 2013 I P L i t i g a t o r 1
Paradise Troubled
by Alleged Unfair
Competition
Involving
Certification Mark
What impact, if any, does a fed-
eral service mark registration for
the stylized logo shown in Exhibit 1
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?
On March 27, 2013, Paradise
Media Ventures, LLC d/b/a Inter-
active Media Ventures a/k/a Social
Media Marketing University (Para-
dise) filed a two-count complaint
in the Northern District of Geor-
gia against Minnesota resident Eric
Mills. [Paradise Media Ventures,
LLC v. Eric Mills, No. 1:13-cv-
1003-TWT, filed 03/27/13 in the
US District Court for the Northern
District of Georgia, Atlanta Divi-
sion, and assigned to US District
Judge Thomas W. Thrash.] 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.
[Count One of the complaint does
not expressly state whether the unfair
competition claim arises under fed-
eral law (§ 43(a) of the Lanham Act)
or under state law. However, a lib-
eral reading of the complaint leads
to the conclusion that it purports
to state a federal cause of action
because ¶ 8 of the complaint asserts
that “this Court has federal question
subject matter jurisdiction under 28
U.S.C. § 1338.”] 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 trademark
registrations. Below are provided fur-
ther details concerning these registra-
tions, as they frame legal principles
likely to apply in the case.
Paradise is the owner of record
of US Service Mark Registration
No. 3,900,172 (the ’172 Registra-
tion), for the mark (logo) shown
in Exhibit 1, for “Education ser-
vices, 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 processing of the applica-
tion for registration, a US Patent
and Trademark Office (USPTO)
Trademark Examining Attorney, in
an August 22, 2010 Office Action,
required the insertion of the follow-
ing disclaimer, which now appears in
the ’172 Registration:
NO CLAIM IS MADE TO
THE EXCLUSIVE RIGHT TO
USE “CERTIFIED SOCIAL
MEDIA STRATEGIST” OR
“UNIVERSITY” OR “CER-
TIFIED”, 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 SOC-
IAL MEDIA STRATEGIST
SMM UNIVERSITY” AND
3 STARS, WITH A RIB-
BON CROSSING IT WITH
THE WORD “CERTIFIED”
APPEARING ON THE RIB-
BON.
Paradise also is the owner of record
of a registration appearing on the
Supplemental Register, namely,
US Service Mark Registration No.
4,208,089 (the ’089 Registration),
for the word mark CERTIFIED
SOCIAL MEDIA STRATEGIST®,
[Though the mark is not registered
on the Principal Register, use of the
“®” symbol is still appropriate. See
15 U.S.C. § 1111 (authorizing such
usage by any “registrant of a mark
registered in the [USPTO]”).] for the
same services as those recited in the
’172 Registration. The ’089 Registra-
tion, which issued on September 11,
2012, recites a first-use-in-commerce
date of March 17, 2012. [Paragraph
18 of the complaint, however, alleges
that first use of that mark occurred
in May 2009.] In a July 3, 2012 Office
Action, the USPTO refused registra-
tion of that mark on the Principal
Register, on the ground that the mark
was merely descriptive of the services
offered. The Trademark Examin-
ing Attorney mentioned the earlier
Social Media
Mike Cicero
Exhibit 1

3. 2 I P L i t i g a t o r MYA/JUNE 2013
disclaimer of the words comprising
that mark in the application leading
to the ’172 Registration, and pro-
vided the applicant with the option
of amending the application so as to
seek registration on the Supplemen-
tal Register. The following day, the
applicant amended the application
accordingly.
Complaint Allegations
Paradise alleges that it “has been
at the forefront of developing meth-
ods 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 com-
panies using Social Media to manage
and improve image, perception, vis-
ibility, leads, sales and market share.”
According to the complaint, around
115,000 people have completed Para-
dise’s training and certification pro-
gram 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 Mar-
keter of the Year by the Technol-
ogy Association of Georgia.”
The complaint alleges that
Mr. Mills operates the National
Institute for Social Media (NISM)
(see Exhibit 2) and initially (such as
in 2011) used the term CERTIFIED
MASTER OF SOCIAL MEDIA to
refer to its training program. How-
ever, 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. Para-
dise alleges that such usage “is likely
to cause confusion among current
students, prospective students, pro-
gram graduates, educational institu-
tions and businesses that identify
[Paradise’s] CSMS certification as an
industry standard.”
Applicable Legal
Principles
Below are summarized general
legal principles governing composite
marks, trademark disclaimers, and
marks registered on the Supplemen-
tal Register.
1. The protection afforded by a
federal registration of a stylized
composite mark (logo) contain-
ing disclaimed matter “may be
limited to the stylized form of
otherwise unregistrable words,”
and “a distinctive configura-
tion of words does not of itself
impart registrability to the words
standing alone.” [In re K-T Zoe
Furniture, Inc., 16 F.3d 390, 394
(Fed. Cir. 1994).]
2. “[T]he disclaimer of certain
words in earlier marks does
not constitute waiver of the
trademark itself, or of a later-
registered trademark—a dis-
claimer is not an acknowledgment
of descriptiveness and has no
effect on plaintiff’s subsequent
registration of [the disclaimed
words].” [CJ Prods LLC v. Ontel
Prods. Corp., 809 F. Supp. 2d 127,
162 (E.D.N.Y. 2011).]
3. Under the Lanham Act: No
disclaimer…shall prejudice or
affect the applicant’s or regis-
trant’s rights then existing or
thereafter arising in the dis-
claimed matter, or his right of
registration on another applica-
tion if the disclaimed matter be
or shall have become distinc-
tive of his goods or services.
[15 U.S.C. § 1056(b).]
4. “It is well settled that an appli-
cant may seek to register any
portion of a composite mark if
that portion presents a separate
and distinct commercial impres-
sion which indicates the source
of applicant’s goods or services
and distinguishes applicant’s
goods or services from those of
others.” [In re 1175856 Ontario
Ltd., 81 U.S.P.Q.2d 1446, 1448
(T.T.A.B. 2006).]
5. The Lanham Act accords simi-
lar 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 distinc-
tiveness,” and such registration
does not prevent registration on
the Principal Register. [15 U.S.C.
§ 1095.]
6. “Unlike registrations on the
Principal Register, registrations
on the Supplemental Register do
not receive some of the advan-
tages extended to marks regis-
tered on the Principal Register.
Supplemental registration is not
prima facie evidence of the valid-
ity of the registered mark, of
ownership of the mark, or of
the registrant’s exclusive right
to use the registered mark in
commerce.” [In re Chippendales
USA, Inc., 622 F.3d 1346, 1353
n.9 (Fed. Cir. 2010).]
7. However, a supplemental regis-
tration “enables the registrant to
satisfy registration requirements
under the trademark laws of for-
eign countries, enables the regis-
trant to sue for infringement
in federal court, and provides
useful business information
Exhibit 2

4. on a readily accessible, central
register.” [In re Bush Bros. &
Co., 884 F.2d 569, 570 n.2 (Fed.
Cir. 1989).]
8. Because a supplemental registra-
tion is not prima facie evidence of
validity of the registered mark,
the trademark owner must prove
that the mark has acquired sec-
ondary meaning to maintain an
action for infringement or unfair
competition. [Avco Corp. v. Pre-
cision Airmotive, LLC, No. 4:12-
CV-1313, 2012 U.S. Dist. LEXIS
164652, at *7 (M.D. Pa. Nov. 19,
2012).]
Mike Cicero is a partner with
Womble, Carlyle, Sandridge & Rice,
LLP in Atlanta, GA.
Copyright © 2013 CCH Incorporated. All Rights Reserved.
Reprinted from IP Litigator, May/June 2013, Volume 19, Number 3, pages 40–42,
with permission from Aspen Publishers, Wolters Kluwer Law & Business, New York, NY,
1-800-638-8437, www.aspenpublishers.com