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  • User of mark refused registration under Section 2(a) of the Lanham Act still may enforce rights under common law.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • FOOTNOTE 4 "If opposer did not have a registration, applicant would still be confronted with opposer's common law rights accrued through use. See, e.g., Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264 (1st Cir. 1987). See also, In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999)("The owner of a trademark need not register his or her mark in accordance with the Lanham Act in order to use the mark in connection with goods or to seek to prevent others from using the mark."), and In re McGinley, 660 F.2d 481, 486 n.12, 211 USPQ 668, 674 n.12 (CCPA 1981) (User of mark refused registration under Section 2(a) of the Lanham Act still may enforce rights under common law)."
  • Imprecise evidence may be unable to show the overall scope of goods using the mark.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • As the Court of Customs and Patent Appeals stated in Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939-40 (Fed. Cir. 1983): “SquirtCo overreached, seeking a holding that would bring within the ambit of protection of its mark SQUIRT for soft drinks virtually any goods which might be used as promotional items for that product. …To establish its theory, SquirtCo sought to introduce evidence of long and extensive sales of soft drinks under the mark SQUIRT and introduced evidence that it sold or gave away many types of items bearing the mark SQUIRT. However, the evidence was too imprecise to show the quantum of use of SQUIRT on individual items, that it was continuous rather than isolated usage, or that the public has come to associate the mark SQUIRT with a particular item or a line of toys.”
  • In order to establish common law rights in a mark for services, one must show that the services were performed as a regular or recurring activity associated with the mark.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • In Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009), the Board stated that in order to establish common law rights in a mark for services the plaintiff must show that the services were “performed as a regular or recurring activity associated with the mark.”
  • It is the burden of opposer to demonstrate that it has used its mark in a regular or recurring manner so that the consuming public would be aware that opposer offers the goods under the mark and therefore associate opposer’s mark with the goods.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • It is the burden of opposer to demonstrate that it has used its mark in a regular or recurring manner so that the consuming public would be aware that opposer offers the goods under the mark and therefore associate opposer’s mark with the goods.
Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001) Grand Total
In Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) 1
In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999) 1
Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264 (1st Cir. 1987) 1
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) 1
In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981) 1
Grand Total 2 3 5
No Statutes Listed.