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  • Prior Use of a mark in an analogous manner is grounds for an opposition.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Furthermore, it "is well settled that one may ground one's opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use." T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1991 (Fed. Cir. 1996).
  • Evidence: Opposer does not need to provide direct evidence regarding opposer's use of the mark, indirect evidence is sufficient.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • "The cases on analogous use have not required that the opposer proffer survey evidence or other direct evidence of the consuming public's identification of the target word or phrase with the opposer as the source of a given product or service. Instead, the fact finder may infer the fact of identification on the basis of indirect evidence regarding the opposer's use of the word or phrase in advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications." T.A.B. Systems, 37 USPQ2d at 1881.
  • Evidence: Opposer may use advertising and promotional use of a term to defeat a right of registration.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The CCPA "has recognized that a party may rely upon advertising and promotional use of a term or expression to defeat a right of registration asserted by another who has made subsequent trademark use of that term or expression on the same or similar goods." Miller Brewing v. Oland's Breweries, 192 USPQ at 268 n.7.
  • Case Finding: Based on the facts established by the evidence of record, opposer failed to take advantage of the intent-to-use provisions and has failed to meet the threshold requirements to benefit from analogous use doctrine.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Opposer, acting at its peril, failed to take advantage of the intent-to-use provisions provided by the Trademark Law Revision Act. Thus, in order to assert priority vis-ŕ-vis applicant, opposer had to rely on the doctrine of analogous use. Based on the facts established by the evidence of record, opposer has failed to meet the threshold requirements to benefit from that doctrine.
  • An intent-to-use applicant may tack on analogous use to its application.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 15 "Even an intent-to-use applicant may tack on analogous use to its application. Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1256-57 (TTAB 1995) ("We note that our modified test contemplates the ‘tacking' of applicant's use analogous to trademark use, and any continuing association of the mark with applicant and its goods which may be shown to have resulted therefrom, onto the constructive use date which applicant would obtain through issuance of a registration for its mark. While this is an issue of first impression for the Board, we believe that an intent-to-use applicant, with a bona fide intent to make use of the applied for mark in commerce, should be permitted to engage in such tacking, if circumstances show that the party has had a continuing intent to cultivate an association of the mark with itself and its goods or services and that such an association was created")."
  • Where opposer has made bona fide sales in the ordinary course of trade, the TTAB does not have to determine whether opposer's use constitutes use analogous to trademark use.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Because we have found that opposer has made bona fide sales in the ordinary course of trade, we do not have to determine whether opposer's use constitutes use analogous to trademark use.
L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Grand Total
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996) 1
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995) 1
Miller Brewing Company v. Oland's Breweries [1971] Limited, 548 F.2d 349, 192 USPQ 266 (CCPA 1976) 1
Grand Total 3 3
No Statutes Listed.