No summary, proceed to other tabs.

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • Priority is not in issue where opposer's pleaded registrations are of record.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Moreover, because opposer's pleaded registrations are of record, priority is not an issue in regard to opposer's claim under Section 2(d), as to the mark and goods covered by said registrations. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Moreover, because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the mark and goods or services covered by said registrations. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In any event, opposer has proven use of its MISS UNIVERSE mark which predates applicant's May 31, 2002 application filing date, which is the earliest date upon which applicant may rely for priority purposes in this case.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • Further, because opposer's registrations are of record, priority is not in issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Because opposer's pleaded registrations are of record, priority is not in issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the evidence shows that opposer began using many of its HOG marks, including HEDGE HOG, EDGE HOG, LEAF HOG, GRASS HOG and LAWN HOG, prior to the filing date of applicant's intent-to-use applications in 2002, which are the earliest dates on which applicant can rely.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Because opposer's pleaded registrations are of record, priority is not in issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007) 108, 110 (CCPA 1974).
      • Thus, opposers have also established priority as to their common law use of the BEARS and CHICAGO BEARS marks on goods that are either identical (towels) or closely related to applicant's goods (mugs, auto and bike tags, pennants, watches, and similar items). Also, priority is not an issue here in view of the Chicago Bears Football Club's ownership of registrations for the BEARS and CHICAGO BEARS marks for the goods and services in those registrations. See King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • In addition, in view of opposer's ownership of valid and subsisting registrations of its pleaded marks, there is no issue as to opposer's priority. See King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).1

        FOOTNOTE 1 "Contrary to applicant's contention in its brief, where as here, opposer has submitted certified status and title copies of its pleaded registrations, opposer is not required to prove that the marks in such registrations acquired distinctiveness prior to the filing date of applicant's application. Rather, priority is not in issue. Applicant's additional contentions in its brief that opposer's marks are functional, non-distinctive, and lack source indicating significance constitute an impermissible collateral attack on opposer's pleaded registrations. In the absence of a counterclaim for cancellation, these arguments cannot be considered. See Trademark Rule 2.106(b)(2)(ii) and TBMP §313.01 (2d ed. rev. 2004) and cases cited therein."

    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Moreover, because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therein and services certified thereby. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • Priority is not an issue in this proceeding because opposers have properly made of record certified status and title copies of their four registrations of the mark LEGO covering a wide array of toys. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • The record clearly establishes opposer's prior use of THE SPORTS AUTHORITY as a trade name. More importantly, since THE SPORTS AUTHORITY and the TSA logo have been registered as marks, and copies of these registrations showing status and title were submitted with TSAM's notice of reliance, priority is not an issue here. See King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We sustain the opposition as to opposer's Section 2(d) ground of opposition. We find that Section 2(d) priority is not an issue in this case, in view of opposer's submission of status and title copies of its pleaded registrations. See King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • Because opposer has established the current status and title of its pleaded registration, Section 2(d) priority is not at issue with respect to the mark and the goods set forth in that registration, i.e., "publications, namely newspapers, books, and calendars relating to baseball, principally items concerning minor league and college baseball." See King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • Additionally, because opposer's pleaded registration is of record, priority is not an issue in this case. See King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • With regard to the issue of priority, because opposer owns valid and subsisting registrations of its pleaded mark, the issue of priority does not arise with respect to the goods listed in the registrations. See King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Priority is not in issue because opposer's pleaded registration for BOSS AUDIO SYSTEMS and design has been made of record. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the record shows that opposer has used its mark on automobile audio products since prior to the August 11, 2000 filing date of applicant's intent-to-use application.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • In view of opposer's ownership of a valid and subsisting registration, there is no issue regarding opposer's priority. King Candy, Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • As noted above, Starbucks U.S. Brands, LLC, has established its ownership of valid and subsisting registrations for the various STARBUCKS marks. Therefore, there is no issue as to opposers' priority. See King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • With regard to the issue of priority, because opposer owns valid and subsisting registrations of its pleaded "J&M Marks," the issue of priority does not arise. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); and Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). Moreover, opposer's use of the mark J&M since 1892 precedes applicant's use of his involved mark since 1983.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • We agree with opposer's argument that priority is not an issue insofar as the first of these two claims is concerned, as opposer has introduced into the record a certified copy of its pleaded registration showing that it is valid and subsisting and that title is in opposer. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • We find, first, that because opposer's pleaded Registration No. 1446650 has been properly made of record, Section 2(d) priority is not an issue in this case as to the mark (BARBARA'S and design; see supra) and the goods ("processed foods, namely potato chips, mashed potatoes," in Class 29, and "foods, namely bakery goods, corn and tortilla chips, bread sticks, pretzels, breakfast cereals," in Class 30) covered by said registration. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • First, we note that, because opposer has made its pleaded registrations of record, priority is not in issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • To establish priority on a likelihood of confusion ground brought under Trademark Act Section 2(d), a party must prove that, vis-a-vis the other party, it owns "a mark or trade name previously used in the United States and not abandoned,
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • To establish priority on a likelihood of confusion ground brought under Trademark Act Section 2(d), a party must prove that, vis-a-vis the other party, it owns "a mark or trade name previously used in the United States ... and not abandoned...." Trademark Act Section 2, 15 U.S.C. Section 1052.
  • A plaintiff may establish its own prior proprietary rights in a mark through actual use or through use analogous to trademark use.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • A plaintiff may establish its own prior proprietary rights in a mark through actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites which creates a public awareness of the designation as a trademark identifying the party as a source. See Trademark Act Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
  • Ownership of a domain name cannot, by itself, establish priority of use.
    • Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006).
      • FOOTNOTE 8 "In any event, acquisition of a domain name cannot, by itself, establish priority of use. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1556 (9th Cir. 1999)."
  • Petitioner does not necessarily have priority simply because it owns a registration.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Inasmuch as both petitioner and respondent own registrations, petitioner does not necessarily have priority simply because it owns a registration. Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (The "Board has taken the position, in essence, that the registrations of each party offset each other; that petitioner as a plaintiff, must, in the first instance, establish prior rights in the same or similar mark … Of course, petitioner or respondent may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date").
  • Petitioner or respondent may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Inasmuch as both petitioner and respondent own registrations, petitioner does not necessarily have priority simply because it owns a registration. Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (The "Board has taken the position, in essence, that the registrations of each party offset each other; that petitioner as a plaintiff, must, in the first instance, establish prior rights in the same or similar mark … Of course, petitioner or respondent may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date").
  • Absent any evidence of an earlier priority date, the earliest date upon which a party can rely is the filing date of its application.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • In this case, because respondent has not submitted any evidence of an earlier priority date, the earliest date upon which it can rely is the filing date of its application (April 23, 2002). Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985) ("The earliest date of first use upon which Intelsat can rely in the absence of testimony or evidence is the filing date of its application"). Inasmuch as petitioner's underlying application was filed on December 22, 1997, petitioner has priority.
  • Section 2(d) priority is not an issue as to those marks and the goods covered by those registrations where the parties have stipulated to the status and title of the registrations.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Because the parties have stipulated to the status and title of opposer's pleaded registrations of the marks GENUINE BODY and GENUINE SPA, Section 2(d) priority is not an issue in this case as to those marks and the goods covered by those registrations. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Where both petitioner and respondent are owners of registrations, petitioner must prove priority of use.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Where both petitioner and respondent are owners of registrations, petitioner must prove priority of use. Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154, 1160 n.9 (TTAB 1987); American Standard Inc. v. AQM Corp., 208 USPQ 840, 841-842 (TTAB 1980); SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975).
  • For proving priority of use, petitioner may rely upon the filing date of its application for registration as evidence of its use of the mark.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In proving its priority of use, petitioner may rely upon the filing date of its application for registration as evidence of its use of the mark. Henry Siegel Co. v. M & R Mfg. Co., supra; American Standard Inc. v. AQM Corp., supra.
  • For purposes of priority, the date of first use in commerce could be when the mark was first used on a sign, instead of the date of incorporation of the entity.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • For purposes of analyzing the issue of priority within the context of opposer's Section 2(d) claim, while opposer states that he intends to rely on his date of incorporation as his date of first use in commerce, the earliest date upon which opposer may rely for priority purposes in this case is July 2002, the date opposer posted his sign displaying the mark.
  • Priority of use can be established through its predecessor in interest's use of the mark.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The record shows that petitioner, through its predecessor in interest, Covalt Enterprises, Inc., began use of its IZZY'S marks in connection with restaurant services and pizza in 1979, that is, many years prior to respondent's first use of his mark in 1996. Thus, petitioner has established its priority of use, and respondent does not contend otherwise.
  • Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006)
      • "[O]ral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding." Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965).
  • An intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • An intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application. See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998); and Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995).
  • Elements for prevailing on the issue of priority pursuant to Article 7 of the Pan American Convention.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In this particular case, in order to prevail on the issue of priority pursuant to Article 7 of the Pan American Convention, applicant must establish that there is no genuine dispute (1) that it is the owner of a PARDO'S CHICKEN mark protected in Peru; (2) that applicant may have known that opposer is using or applying to register an interfering mark in the United States; (3) that opposer had knowledge of the existence and continuous use in Peru of the PARDO'S CHICKEN mark in connection with services in the same class prior to his use of the PARDO'S CHICKEN mark in the United States; and (4) that applicant has complied with the requirements set forth in the domestic legislation in the United States and the requirements of the Pan American Convention –- that is, filing for protection of its mark under Section 44 of the Lanham Act.
  • Description of tacking the prior use of one mark to another.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In order to tack on prior use of one mark on to another, the marks must be legal equivalents. To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both as the same mark. Van Dyne-Crotty, supra. Thus, a minor difference in the marks, such as an inconsequential modification or modernization of the later mark (in the nature of opposer's modification, for example), would not be a basis for rejecting a tacking claim. See In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977).
  • Tacking is a question of law.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Tacking is a question of law. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). As the Court stated (citing Van Dyne-Crotty, supra at 1868), "No evidence need be entertained other than the visual or aural appearance of the marks themselves."
  • To establish tacking, no evidence need be entertained other than the visual or aural appearance of the marks themselves."
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • As the Court stated (citing Van Dyne-Crotty, supra at 1868), "No evidence need be entertained other than the visual or aural appearance of the marks themselves."
  • The standard for tacking is very strict and tacking in general is permitted only in "rare instances.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The standard for tacking is very strict and tacking in general is permitted only in "rare instances." See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1869 (Fed. Cir. 1991).
  • Two marks are not necessarily legal equivalents merely because they would be deemed confusingly similar.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Applicant is clearly relying on a likelihood of confusion analysis in support of its tacking claim, essentially arguing that because of the fame of ELIZABETH ARDEN, consumers would associate ARDENBEAUTY with ELIZABETH ARDEN and they would believe the products sold under either mark come from the same company. However, the law is clear that two marks are not necessarily legal equivalents merely because they would be deemed confusingly similar. Van Dyne-Crotty, Inc., supra.
  • Simply because a mark is a portion of an earlier mark, the analysis should not stop there. Instead, the inquiry must focus on both marks in their entirety to determine whether each conveys the same commercial impression.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In any event, ARDENBEAUTY is not the legal equivalent of ARDEN. "Simply because a mark is a portion of an earlier mark, our analysis should not stop there. Instead, our inquiry must focus on both marks in their entirety to determine whether each conveys the same commercial impression." Van Dyne-Crotty, supra at 1869, emphasis in original (rejecting the argument that the Board should have considered CLOTHES THAT WORK as simply the abbreviated version of CLOTHES THAT WORK. FOR THE WORK YOU DO). These marks are not indistinguishable and do not create the same commercial impression. Where ARDEN refers generally to any person with that surname, ARDENBEAUTY imparts additional information about that person, one possessing certain qualities or characteristics.
  • The law permits a user who changes the form of its mark to retain the benefit of its use of the earlier form, without abandonment, if the new and old forms create the same, continuing commercial impression.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The record shows that opposer changed the font of the ARDEN B mark in mid-2001 from its original script style to the block letter form shown above and without the dot or period after the letter "B." However, we find that these are inconsequential changes in terms of opposer's continuing priority rights in the mark. See Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976) ("The law permits a user who changes the form of its mark to retain the benefit of its use of the earlier form, without abandonment, if the new and old forms create the same, continuing commercial impression" Italics in original.) There is no change in significance from one form to the other and the difference in appearance is negligible. The two marks are substantially identical. In any event, opposer has demonstrated use of the mark in its modified form since prior to the filing date of the application.
  • Opposer may establish prior use through pleaded registrations and establishing prior use of the marks on goods identified in applicant's application.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • In short, priority is not at issue with respect to the mark and goods covered by opposer's pleaded registration, and opposer in any event has established prior use of its marks on such goods as well as on certain of the goods identified in applicant's application, i.e., newsletters and printed recipes. Opposer therefore has proven this element of its Section 2(d) claim.
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • We also find that opposer has established its Section 2(d) priority with respect to "posters," the goods identified in applicant's Class 16 application, and with respect to "educational services, namely, conducting courses, seminars, conferences and workshops in the field of baseball history…" which are included among the services recited in applicant's Class 41 application.
  • To prevail on a Section 2(d) ground of opposition, an opposer need not prove priority and likelihood of confusion as to all of the goods or services identified in the applicant's application. Rather, if priority and likelihood of confusion are established as to any of the goods or services identified in an opposed class of goods or services, the opposition to registration of the mark as to all of the goods or services identified in that class will be sustained.
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • FOOTNOTE 9 "Opposer's publisher, Lee Folger, also testified that opposer has used its mark in connection with services that are similar or related to the other services recited in applicant's Class 41 application. However, although he testified as to opposer's current and past use of its mark in connection with such services, he did not identify the dates of first use of the mark in connection with such services, nor can we ascertain from his testimony that opposer's use of its mark in connection with such services commenced prior to applicant's August 30, 1999 application filing date. It is settled, however, that in order to prevail on a Section 2(d) ground of opposition, an opposer need not prove priority and likelihood of confusion as to all of the goods or services identified in the applicant's application. Rather, if priority and likelihood of confusion are established as to any of the goods or services identified in an opposed class of goods or services, the opposition to registration of the mark as to all of the goods or services identified in that class will be sustained. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Shunk Manufacturing Company v. Tarrant Manufacturing Company, 137 USPQ 881 (CCPA 1963); Alabama Board of Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408, 411 n.7 (TTAB 1986); and In re Alfred Dunhill Ltd., 224 USPQ 501 (TTAB 1984).
  • To establish priority in a likelihood of confusion matter, the petitioner must show proprietary rights which may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Regarding petitioner's use of its mark: "To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights." Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [citation omitted].
  • Oral testimony, even of a single witness, if sufficiently probative, may be sufficient to prove priority.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Oral testimony, even of a single witness, if "sufficiently probative," may be sufficient to prove priority. Powermatics, Inc. v. Glebe Roofing Products Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965); and 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB 1972).
  • When establishing priority, all evidence, and not a particular piece of evidence itself, should be reviewed to see if the evidence as a whole establishes prior use by a preponderance of the evidence.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • At this point, we take into consideration the Federal Circuit's admonition when we are determining dates of use for priority purposes: "The TTAB concluded that each piece of evidence individually failed to establish prior use. However, whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use. The TTAB failed to appreciate this. Instead, the TTAB dissected the evidence to the point that it refused to recognize, or at least it overlooked, the clear interrelationships existing between the several pieces of evidence submitted. When each piece of evidence is considered in light of the rest of the evidence, rather than individually, the evidence as a whole establishes by a preponderance that West used the "FAST EDDIE'S" mark prior to Jet's admitted first use of the mark." West Florida Seafood, 31 USPQ2d at 1663.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • At this point, we take into consideration the Federal Circuit's admonition when we are determining dates of use for priority purposes: "The TTAB concluded that each piece of evidence individually failed to establish prior use. However, whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by a preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use. The TTAB failed to appreciate this. Instead, the TTAB dissected the evidence to the point that it refused to recognize, or at least it overlooked, the clear interrelationships existing between the several pieces of evidence submitted. When each piece of evidence is considered in light of the rest of the evidence, rather than individually, the evidence as a whole establishes by a preponderance that West used the "FAST EDDIE'S" mark prior to Jet's admitted first use of the mark." West Florida Seafood, 31 USPQ2d at 1663.
  • The filing date of an intent-to-use application serves as a constructive use date for purposes of priority in this opposition proceeding.
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • Turning to the question of priority, we find there is no genuine issue that applicant is entitled to rely upon the January 9, 2004 filing date of its intent-to-use application as its constructive use date for purposes of priority in this opposition proceeding, subject to applicant's establishment of constructive use (by filing an acceptable allegation of use, resulting in issuance of a registration). See Section 7(c) of the Trademark Act. See also, for example, Larami Corp. v. Talk To Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995); and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
  • In an opposition proceeding, the filing date of an asserted Section 44(e) application can establish the date for purposes of priority.
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • Similarly, we find no genuine issue that the earliest date upon which opposer is entitled to rely for purposes of priority in this opposition proceeding is the December 6, 2004 filing date of its asserted Section 44(e) application.3 See Section 7(c) of the Trademark Act, supra. See also 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §16.16 (4th ed. 2005).
  • Priority depends solely on priority of use in the United States, and not priority elsewhere in the world.
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • It is well settled that "[p]riority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world." See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §29.02 (4th ed. 2005).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • Thus, while opposer argues that it has made extensive foreign use of its mark that is prior to applicant's filing date, such use does not establish priority of use for purposes of this opposition proceeding. See Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990).
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • As noted above, opposer's use of its mark in foreign commerce does not confer priority of use upon opposer for purposes of establishing its claim of priority in this proceeding.
  • The filing dates of the applications are significant because respondent can rely on these dates for his priority, and in order to prevail on priority, petitioner would have to establish an earlier date.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The filing dates of the applications are significant because respondent can rely on these dates for his priority, and in order to prevail on priority, petitioner would have to establish an earlier date. 15 U.S.C. § 1057(c). See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) ("Of course, petitioner [who owns a registration] or respondent may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date"). See also Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985) ("The earliest date of first use upon which Intelsat can rely in the absence of testimony or evidence is the filing date of its application").
  • Just as an applicant in a use-based application can rely, for purposes of priority in a proceeding such as this, upon use (including use analogous to trademark use) prior to the filing date of its application, or even prior to its claimed use dates, an intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, (either interstate or intrastate use) prior to the constructive use date of the intent-to-use application.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • "Just as an applicant in a use-based application can rely, for purposes of priority in a proceeding such as this, upon use (including use analogous to trademark use) prior to the filing date of its application, or even prior to its claimed use dates, an intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application. See Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995). (Intent-to-use applicant permitted to tack use analogous to trademark use to its constructive use date so long as applicant had continuing intent to cultivate association of mark with itself and its goods or services up until the filing date). Moreover, whether or not this prior use is strictly intrastate in nature is inconsequential. While interstate use is a prerequisite to federal registration, and applicant must file evidence of the same before any registration will issue, rights in the mark itself are not dependent upon interstate use. It is well established that rights in and to a trademark are created by use of the mark in either intrastate or interstate commerce." Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (footnote omitted).
  • To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Regarding petitioner's use of the mark, the issue of petitioner's priority date is more complicated. "To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights." Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (citation omitted).
  • Evidence of common law use could entitle a party to assert an earlier priority use date.
    • Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006).
      • Furthermore, opposer does not assert, nor does the record reflect, that opposer has made any common law use of the JACK & JONES mark that would entitle opposer to assert an earlier priority use date. See, for example, Lucent Information Management, Inc. v. Lucent Technologies, Inc., 986 F.Supp 253, 45 USPQ2d 1019 (D.Del. 1997).
  • In order to establish priority based on common law rights, opposer's burden is to demonstrate by a preponderance of the evidence proprietary rights in the marks prior to the filing date of applicant's intent-to-use application.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • In order to establish priority based on common law rights, opposer's burden is to demonstrate by a preponderance of the evidence proprietary rights in TUNDRA and TUNDRA SPORT for clothing prior to June 1, 1998, the filing date of applicant's intent-to-use application. See, e.g., Eastman Kodak Co. v. Bell Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993); and NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003).
  • Ways to establish prior common law rights.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Prior common law rights in a mark may be established through use of the designation in connection with a product in commerce in a manner analogous to trademark use, i.e., through use in advertising, use as a trade name, or any other manner of public use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); and Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972).
  • Priority may be based on intrastate use of a mark.
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • The record shows that MTO first used its mark MAID TO ORDER in connection with its services, i.e., cleaning of domestic and business premises, in 1971. This date is earlier than the date of first use of 1987 established by MTO-Ohio in connection with its cleaning services and franchising services. Priority may be based on intrastate use of a mark. Corporate Document Services, Inc. v. I.C.E.D. Management, Inc., 48 USPQ2d 1477 (TTAB 1998). Thus, priority lies with MTO.
  • A registration can be made of record by virtue of a counterclaim.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The registration for the word mark is of record by virtue of the counterclaim brought by applicant.26 See Trademark Rule 2.122(b). Cf. Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 396 (TTAB 1979) ("if the counterclaim fails, opposer's registered mark is entitled to all of the presumptions of §7(b) of the statute" including ownership of the mark and validity of the registration). Therefore, opposer's standing has been established, and its priority with respect to these registered marks is not in issue. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Methods for establishing proprietary rights in a term.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • However, insofar as opposer, by its second claim, is asserting that it has acquired superior proprietary rights in NASDAQ for goods such as "t-shirts, hats, jackets, golf balls, footballs, basketballs and baseballs" (Notice of Opposition, ¶ 9), and that applicant's use of the involved NASDAQ and design mark for closely related goods would be likely to cause confusion, proof of the acquisition of the superior proprietary interest must be shown. Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981) ("the opposer must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior use of a technical "trademark," prior use in advertising, prior use as a trade name, or whatever other type of use may have developed a trade identity."). Accordingly, we have examined the record to see what it reveals about opposer's distribution of goods such as "t-shirts, hats, jackets, golf balls, footballs, basketballs and baseballs."
  • Burden of Proof: Opposer has the burden of establishing by a preponderance of the evidence that it is the owner of the pleaded marks and that it has priority such that it can prevail on its likelihood of confusion claim.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • Opposer, as plaintiff in this proceeding, has the burden of establishing by a preponderance of the evidence that it is the owner of the pleaded marks and that it has priority such that it can prevail on its likelihood of confusion claim. Sanyo Watch Co. v. Sanyo Electric Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982).
  • Likelihood of confusion cannot be recognized where one claimed to be aggrieved by that confusion does not have a right superior to the opponent's right.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • That is, likelihood of confusion cannot be recognized where one claimed to be aggrieved by that confusion does not have a right superior to the opponent's right. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); and BellSouth Corp. v. Planum Technology Corp., 14 USPQ2d 1555 (TTAB 1988).
  • Definition: Commerce.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • "Commerce" under the Trademark Act is coterminous with that commerce that Congress may regulate under the Commerce Clause of the United States Constitution.16 International Bancorp, L.L.C. v. Societe des Bains de Met et du Cercie des Etrangers Monaco, 329 F.3d 359, 66 USPQ2d 1705 (4th Cir. 2003). See also, United We Stand America, Inc. v. United We Stand, America, NY, Inc., 128 F.3d 86, 92-93, 44 USPQ2d 1351 (2nd Cir. 1997); and Planetary Motion v. Techsplosion, 261 F.3d 1188, 1194, 59 USPQ2d 1894 (11th Cir. 2001). FOOTNOTE 16 ""The Congress shall have Power ... to regulate Commerce with foreign nations, and among the several States, and with the Indian Tribes[.]" U.S. Const. art. I, §8, cl. 3."
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • The case before us is analogous to the case of Buti Fashion World Company v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2nd Cir. 1998), wherein the Court stated the following about the scope of "commerce" as defined by the Trademark Act: "In the trademark context, the limits of Congress's Commerce Clause authority are manifested by the cases that define the extraterritorial reach of the Lanham Act. . . . [W]e are concerned here not with the extraterritorial force of our trademark laws to regulate or redress the conduct of a foreign citizen in a foreign land, but with the ability of that foreign citizen to gain the protection of our trademark laws, and the degree of interaction with our nation's commerce that is required of him to receive that protection."
  • Prior use of a mark in a foreign country does not entitle its owner to claim exclusive rights in the United States as against one who used a similar mark in the United States prior to entry of the foreigner into the United States market.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • It is well established that prior use of a mark in a foreign country does not entitle its owner to claim exclusive rights in the United States as against one who used a similar mark in the United States prior to entry of the foreigner into the United States market. Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed. Cir. 1990). Thus, opposer's insurance brokerage services rendered under its mark in Canada are clearly insufficient to establish use of the mark in connection with services rendered in commerce under the Trademark Act.
  • Establishment of priority rights in a foreign mark used in the United States.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • Similarly, advertising and promotion of a mark in connection with goods or services marketed in a foreign country (whether the advertising occurs inside or outside the United States) creates no priority rights in said mark in the United States as against one who, in good faith, has adopted the same or similar mark for the same or similar goods or services in the United States prior to the foreigner's first use of the mark on goods or services sold and/or offered in the United States, at least unless it can be shown that the foreign party's mark was, at the time of the adoption and first use of a similar mark by the first user in the United States, a "famous" mark. Mother's Restaurants Inc. v. Mother's Other Kitchen, Inc., 218 USPQ 1046, 1048 (TTAB 1983). See also Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Buti Fashion World Company v. Impressa Perosa S.R.L., supra; All English Lawn Tennis Club (Wimbledon) Ltd. v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983); and Vaudable v. Montmartre, Inc., 123 USPQ 357 (NY Sup. Ct. 1959).
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • The Court stated (66 USPQ2d at 1717) that "where the mark is both used in advertising and displays in the United States and attached to services rendered in qualifying commerce overseas defendant has met the use in commerce requirement of the Trademark Act" and went on to state (66 USPQ2d at 1721 – 1722) the following: "The proper inquiry in such circumstances is to evaluate first whether the commerce to which both parties claim their mark is attached may be regulated by Congress, and then to evaluate at what point in time the mark owners began to use or display the mark in the advertising and sale of those qualifying services to the qualifying consumers. … Indeed, that it is not enough for a mark owner to engage in qualifying commerce to create rights in his mark, and that it is not enough for a mark owner to use or display the mark in the advertising or sale of services to create rights in his mark, is critical." (Emphasis in original.)"
  • Applicant's prior knowledge of the existence of opposer's marks is not, in itself, sufficient to constitute bad faith.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • To the extent opposer is arguing that applicant acted in bad faith in adopting its mark, applicant's prior knowledge of the existence of opposer's marks is not, in itself, sufficient to constitute bad faith. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989).
  • Knowledge of a foreign use does not preclude good faith adoption and use in the United States.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • Knowledge of a foreign use does not preclude good faith adoption and use in the United States. Person's Co. Ltd. v. Christman, supra.
  • Elements for a finding of bad faith.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • A finding of bad faith is warranted where (1) the foreign mark is famous in the United States or (2) the use is a nominal one made solely to block the prior foreign user's planned expansion into the United States.
  • An unregistered mark that is used in foreign trade must be distinctive among United States consumers to merit Trademark Act protection.
    • First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005).
      • However, the Court in International Bancorp stated (66 USPQ2d at 1713) that "the use of an unregistered mark in foreign trade does not in any way assure its owner that the mark will merit [Trademark] Act protection; it only makes such protection possible. For an unregistered mark that is used in foreign trade to merit [Trademark] Act protection, that mark must be distinctive among United States consumers."
  • Case Finding: In view of the TTAB's decision in applicant's favor on the issue of priority, opposer cannot as a matter of law prevail on his claim of likelihood of confusion under Section 2(d).
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In view of our decision in applicant's favor on the issue of priority, opposer cannot as a matter of law prevail on his claim of likelihood of confusion under Section 2(d). See Leatherwood Scopes International, Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002); see also, Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006).
  • Case Finding: "Elizabeth Arden" and "Ardenbeauty" are not legally equivalent marks.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • ELIZABETH ARDEN and ARDENBEAUTY are not legally equivalent marks. The two marks, while perhaps confusingly similar, are certainly not indistinguishable. Most significantly, ARDENBEAUTY does not include ELIZABETH and it adds the word BEAUTY. Moreover, the two marks on their face impart different information and create different commercial impressions. ELIZABETH ARDEN identifies a particular individual. ARDENBEAUTY, on the other hand, refers broadly to a type of individual, i.e., an individual possessing a certain quality. Although the word BEAUTY, as applicant has shown, has frequently been adopted as part of registered marks in the field of beauty care products and has little trademark significance on its own, the term nonetheless contributes to the overall commercial impression of the mark. See, e.g., American Paging, Inc. v. American Mobilphone, Inc., 13 USPQ2d 2036 (TTAB 1989) (finding AMERICAN MOBILPHONE PAGING more informative than and hence legally different from AMERICAN MOBILPHONE notwithstanding that "PAGING" was merely descriptive of the services), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990). See also O-M Bread Inc. v. United States Olympic Committee, 65 F.2d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) (OLYMPIC KIDS creates a different commercial impression than OLYMPIC, notwithstanding the disclaimer of KIDS and its lack of strong trademark significance).
  • Case Finding: Priority rests with the party who used the disputed mark earlier in time.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • The record demonstrates that plaintiff first used its mark, MEMBER LEADING JEWELERS GUILD and design, on April 23, 1979 to indicate membership in its organization. Further, the record shows that defendant first used the LEADING JEWELERS OF THE WORLD mark in connection with association services on May 31, 2001, and to indicate membership in its organization on September 20, 2001. Thus, priority rests with plaintiff in the opposition and cancellations.
  • Case Finding: For marks which are pending registration, absent other evidence, the earliest date upon which applicant may rely for priority purposes is the filing date of the application.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Because opposer has not yet obtained registrations of its other three pleaded marks, priority is at issue with respect to those marks. We find that the earliest date upon which applicant may rely for priority purposes is the filing date of its application, January 27, 2003. We find that the earliest dates upon which opposer may rely for priority purposes as to its non-registered marks are the application filing dates for those marks.
  • Case Finding: The date of priority of use was determined based on the connection between the corporate, business, and personal alter egos.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • This is not a case where the current petitioner is simply a successor to an earlier entity that subsequently became the petitioner. See, e.g., West Florida Seafood, 31 USPQ2d at 1664: "Indeed, the pertinent inquiry in this case is simply whether a potential customer would have believed that someone was proclaiming to be engaged in restaurant services under the name "FAST EDDIE'S" at the time of the advertisements. That is undoubtedly what a potential customer would have believed in this case. Moreover, to the extent that the TTAB's decision suggests that West may be attempting to claim prior use for use that it cannot truthfully credit to itself, such a suggestion is nothing more than an unjustifiable refusal to recognize the connection between West Florida Seafood (the corporate name), "FAST EDDIE'S PLACE" (the trade name), and Edwin or E. Porter (the company's president). The TTAB erred in ignoring the rather obvious connection between these corporate, business, and personal "alter egos" operating as "FAST EDDIE'S."" See also Gaylord Bros., Inc. v. Strobel Products Co., 140 USPQ2d 72, 74 (TTAB 1963) ("When he ceased doing business under one name and continued that same business under another name, previously used, title of the mark remained with him, as it was always with him. There is uncontradicted testimony that this person's individual business under the name Strobel Products Co. was taken over and continued by the Strobel Products Company, Incorporated").
  • Case Finding: Priority is not an issue here in view of opposer's submission with its notice of reliance, as well as the identification during the testimony of Don St. Dennis, of status and title copies of the 26 noted registrations for the mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Priority is not an issue here in view of opposer's submission with its notice of reliance, as well as the identification during the testimony of Don St. Dennis, of status and title copies of the 26 noted registrations for the mark TORO. See King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Case Finding: Priority of use is an issue in this case because opposer failed to plead and prove ownership of a registration that would preclude registration of applicant's mark.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Priority of use is an issue in this case because opposer failed to plead and prove ownership of a registration that would preclude registration of applicant's mark under Section 2(d). See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Tacking is available only where the previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Even if defendant had properly amended its counterclaim to allege that it was claiming the right to tack its use of ANTHONY'S RUNWAY 84 onto its use of Anthony's Coal-Fired Pizza, tacking is not appropriate in this case. Tacking is available only where the previously used mark is "the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark." Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991), citing Compania Insular Tabacaleria v. Comacho Cigars, Inc., 167 USPQ 299, 300-304 (TTAB 1970) (the test of legal equivalence is whether the mark should be recognized as one and the same mark). Considering the differences between the term "Coal- Fired Pizza" and "Runway 84," the marks Anthony's Coal- Fired Pizza and ANTHONY'S RUNWAY 84 create distinctly different commercial impressions and are, for all practical purposes, different marks.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Tacking is available only where the previously used mark is "the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark." Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991), citing Compania Insular Tabacaleria v. Comacho Cigars, Inc., 167 USPQ 299, 300-304 (TTAB 1970) (the test of legal equivalence is whether the mark should be recognized as one and the same mark).
  • A party may establish prior use through use analogous to trademark use which is non-technical use of a trademark in connection with the promotion of services under circumstances which do not provide a basis for an application to register, usually because the statutory requirement for use on or in connection with the sale of goods or services in commerce has not been met.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • Indeed, a party may establish prior use through "use analogous to trademark use" which is non-technical use of a trademark in connection with the promotion of services "under circumstances which do not provide a basis for an application to register, usually because the statutory requirement for use on or in connection with the sale of goods [or services] in commerce has not been met." Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993).
  • A party opposing or seeking to cancel registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows by a preponderance of the evidence that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through ‘whatever other type of use may have developed a trade identity.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • "Under the rule of Otto Roth, a party opposing [or seeking to cancel] registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows by a preponderance of the evidence that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through ‘whatever other type of use may have developed a trade identity.'" Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto Roth & Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
  • Although an opposed application is automatically part of the record for the opposition, the allegations contained therein are not evidence in the opposition. See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b) ("The allegation in an application for registration of a date of use is not evidence on behalf of the applicant and must be established by competent evidence.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • The only reference to use by applicant of his mark on May 1, 2006 is the allegation of such use in the application; and it is well-settled that, although an opposed application is automatically part of the record for the opposition, the allegations contained therein are not evidence in the opposition. See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b) ("The allegation in an application for registration … of a date of use is not evidence on behalf of the applicant [and] must be established by competent evidence."); see also, authorities discussed in TBMP section 704.04. Accordingly, the earliest date on which applicant may rely is the June 28, 2006 filing date of his application.
  • An party claiming priority may rely on intrastate use.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Accordingly, an opposer claiming priority may rely on intrastate use. First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007); Maids to Order of Ohio, Inc. v. Maidto- Order, Inc., 78 USPQ2d 1899, 1909 (TTAB 2006) ("Priority may be based on intrastate use of a mark").
  • Because applicant did not submit evidence of its use of the mark prior to the filing date of its intent-to-use application, the earliest priority date on which applicant may rely is the filing date of its application.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Accordingly, because applicant did not submit evidence of its use of ONE FAB FIT prior to the filing date of its intent-to-use application, the earliest priority date on which applicant may rely is the filing date of its application (September 21, 2004). Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844-1845 (TTAB 1995 (owner of an intent-to-use application may rely on its application filing date as a constructive use date for purposes of priority); Zirco Corp. v. AT&T, 21 USPQ2d 1542, 1544 (TTAB 1992).
  • Because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks and the products identified in the registrations.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks and the products identified in the registrations. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
  • Because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therefor and goods and services covered thereby.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Further, and as noted above, the parties stipulated to opposer's priority of use.9 FOOTNOTE 9 "We note in addition that because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therefor and goods and services covered thereby. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974)."
  • For purposes of determining priority of use, applicant's date of first use of the word mark can be construed as of the first use established through evidence.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Accordingly, for purposes of determining priority of use, applicant's date of first use of the word mark PANDA TRAVEL is construed as December 31, 1983. EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982) (documentary evidence showed first use in 1977, the month and day were unknown, therefore, the Board could not presume any date earlier than the last day of the proved period). See also Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB 1985) (evidence established first use in 1968-1969, therefore December 31, 1969 is date of first use).11
  • In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998)(In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).
  • In order for opposer to prevail on its Section 2(d) claim, it must prove that it has a proprietary interest in its mark and that it obtained that interest prior to the actual or constructive first use by applicant.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • In order for opposer to prevail on its Section 2(d) claim, it must prove that it has a proprietary interest in its SAVe mark and that it obtained that interest prior to the actual or constructive first use by applicant. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
  • In order for opposer to prevail on its Section 2(d) claim, it must prove that it has a proprietary interest in its marks that were obtained prior to either the filing date of applicant's applications for registration or applicant's proven date of first use, whichever is earlier.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In order for opposer to prevail on its Section 2(d) claim, it must prove that it has a proprietary interest in its panda marks that was obtained prior to either the filing date of applicant's applications for registration or applicant's proven date of first use, whichever is earlier. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
  • It is petitioner's burden in this case to establish, by a preponderance of the evidence, that it has prior use of its mark.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • To the extent that respondent is arguing that petitioner's evidence of use does not amount to trademark use or use analogous thereto, this is a fair argument. As already noted, it is petitioner's burden in this case to establish, by a preponderance of the evidence, that it has prior use of its mark. We therefore turn to the evidence that petitioner has submitted.
  • It is well settled that in the absence of any evidence of earlier use, the earliest date upon which respondent may rely is the filing date of the underlying application that matured into the subject registration.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • It is well settled that in the absence of any evidence of earlier use, the earliest date upon which respondent may rely is the filing date of the underlying application that matured into the subject registration. See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 TTAB 1995).
  • Mere denial by applicant of opposer's allegation of priority of use is sufficient to put opposer on notice that it must prove its pleaded priority, but it is insufficient to put opposer on notice that any priority opposer will attempt to prove will have to predate the priority that applicant will attempt to prove through tacking.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Mere denial by applicant of opposer's allegation of priority of use is sufficient to put opposer on notice that it must prove its pleaded priority, but it is insufficient to put opposer on notice that any priority opposer will attempt to prove will have to predate the priority that applicant will attempt to prove through tacking.
  • Mere invention, creation or discussion does not create priority rights. The right to register flows from the use of a mark.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • FOOTNOTE 11 "Mr. Torgerson's testimony that he designed the panda logo in 1978 is irrelevant. Mere invention, creation or discussion does not create priority rights. The right to register flows from the use of a mark. Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1774 (Fed. Cir. 1987); La Maur Inc. v. International Pharmaceutical Corporation, 199 USPQ 612, 616 (TTAB 1978) (conception of a mark does not establish priority). Moreover, Mr. Torgerson testified that he/applicant did not use the panda logo until applicant was created in 1984. (Torgerson Dep., p. 15)."
  • Oral testimony may be sufficient to prove the first use of a party's mark when it is based on personal knowledge, it is clear and convincing, and it has not be contradicted.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • FOOTNOTE 15 "We note that Ms. Tsui's testimony alone is sufficient to prove that opposer first used its PANDA TRAVEL mark in June 1981. See National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to prove the first use of a party's mark when it is based on personal knowledge, it is clear and convincing, and it has not be contradicted); Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when the testimony is proffered by a witness with knowledge of the facts and the testimony is clear, convincing, consistent, and sufficiently circumstantial to convince the Board of its probative value); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear, consistent, convincing, and uncontradicted)."
  • Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • "Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding." Powermatics, Inc. v Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965).
  • Plaintiff may rely on the filing date of its application as its priority date.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Essentially, defendant contends that the evidence does not clearly show that Henry Mann was the owner of the mark used prior to 2000, and therefore it is not clear that Mr. Mann could have transferred any rights in the mark to plaintiff. However, we do not need to resolve that issue because plaintiff may rely on the filing date of its application as its priority date (December 15, 2000), Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d at 1284. As discussed below, defendant cannot establish a priority date before December 15, 2000.
  • Prior use need not be shown by a plaintiff relying on a registered mark unless the defendant counterclaims for cancellation.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Because defendant has filed a counterclaim to cancel plaintiff's pleaded registration, priority is in issue. Cf. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) ("prior use need not be shown by a plaintiff relying on a registered mark unless the defendant counterclaims for cancellation").
  • Priority in a mark may be mark established where the other party previously admits to the prior use, notwithstanding any argument that the evidence fails to show opposer's actual date of first use.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • Tucker has admitted that TxDOT has prior use of the mark (Request for Admissions (hereinafter "R/A") No. 72).19 Therefore, priority in TxDOT is established, notwithstanding the previously-referenced argument by Tucker asserting that TxDOT's evidence fails to show opposer's actual date of its first use of the mark on clothing. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007) (admission conclusively establishes the matter that is the subject of the request for admission; subsequent argument to the contrary in response to a motion for summary judgment insufficient to raise a genuine issue of material fact.)
  • Priority is established with the submission of status and title copies of pleaded registrations as the Trademark Act requires consideration, under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • In the opposition, the issue of priority has been removed by virtue of TxDOT's submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
  • Section 2(d) only requires prior use; it does not require use in commerce.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Section 2(d) only requires prior use; it does not require use in commerce.
  • Section 7(c) was added to provide constructive use, dating from the filing date of an application for registration on the principal register, for a mark registered on that register to fix a registrant's nationwide priority rights in its mark from the filing date of its application whether the application is based on use or intent-to-use.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • "As explained by the Board in Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1543-44 (TTAB 1991): ""Section 7(c) was added to the Lanham Act by the Trademark Law Revision Act of 1988 in order to provide constructive use, dating from the filing date of an application for registration on the principal register, for a mark registered on that register. As a review of the legislative history shows, the provision is intended to fix a registrant's nationwide priority rights in its mark from the filing date of its application whether the application is based on use or intent-to-use. This right of priority is to have legal effect comparable to the earliest use of a mark at common law."""
  • Tacking is a defense that must be pleaded to put plaintiff on notice of new matter that defendant is placing at issue.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • In the Board's May 15, 2008 Order denying summary judgment, the Board specifically discussed defendant's tacking argument and instructed that "if [defendant] intends to rely on the mark ANTHONY'S RUNWAY 84 in support of its counterclaim, [defendant] must amend the counterclaim to clearly plead that mark." H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) ("‘tacking' is a defense that must be pleaded to put plaintiff on notice of new matter that defendant is placing at issue (i.e., a mark previously used by defendant that is the legal equivalent of defendant's opposed mark, and that provides a basis for defendant to claim prior use)").
  • The right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Accordingly, the earliest date upon which applicant can rely for priority is the filing date of its intent to use application (contingent upon registration). See Section 7(c) of the Trademark Act; Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991)("[T]here can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights"); and 2 McCarthy on Trademarks and Unfair Competition § 16:17 (4th ed. 2007).
  • The fact a mark is famous in other countries, alone, cannot establish priority in the United States.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Applicant does, however, argue that its mark is famous in other countries, but that fact alone cannot establish priority in the United States. See Person's Co. Ltd. v. Christman, 14 USPQ2d 1477, 1479 and 1480, fn. 18 (Fed. Cir. 1990)("The concept of territoriality is basic to trademark law; trademark rights exist in each country solely according to that country's statutory scheme. ... Although Person's did adopt the mark in Japan prior to Christman's use in United States commerce, the use in Japan cannot be relied upon to acquire U.S. trademark rights. Christman is the senior user as that term is defined under U.S. trademark law.").
  • The filing of an application to register a mark constitutes constructive use of the mark, conferring a right of priority against any other person.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In any event, opposer's underlying application for registration was filed on February 5, 2003, prior to the September 21, 2004 filing date of applicant's application. See Section 7(c) of the Trademark Act of 1946, 15 U.S.C. §1057 (the filing of an application to register a mark constitutes constructive use of the mark, conferring a right of priority against any other person).
  • The Lanham Act provides that respondent may rely on this filing date as its constructive date of first use.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • The Lanham Act provides that respondent may rely on this filing date as its constructive date of first use. 15 U.S.C. Section 1057(c); see e.g., Salacuse v. Ginger Spirits Inc., 44 USPQ2d 1415 (TTAB 1997) (petitioner may rely on the filing date of his applications as his constructive date of first use).
  • The prior use may, but need not, be technical trademark use.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • The prior use may, but need not, be technical trademark use.
  • There can be no unfair surprise to petitioner merely because respondent did not allege priority of use as an affirmative defense. Priority is a required element of petitioner's Section 2(d) claim.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Petitioner's argument that respondent is precluded from moving for judgment on the pleadings because it failed to assert prior use as an affirmative defense is, as noted earlier, misplaced. There can be no unfair surprise to petitioner merely because respondent did not allege priority of use as an affirmative defense. Priority is a required element of petitioner's Section 2(d) claim. See 15 U.S.C. § 1052(d).
  • To establish priority on a likelihood of confusion claim brought under Trademark Act § 2(d), a party must prove that, vis-a-vis the other party, it owns a mark or trade name previously used in the United States and not abandoned.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • Thus, in order for petitioner to establish priority and ultimately prevail in this proceeding, it must demonstrate that it used its pleaded mark FRACSURE in commerce prior to respondent's priority date. See Trademark Act Section 2, 15 U.S.C. §1052 [to establish priority on a likelihood of confusion claim brought under Trademark Act § 2(d), a party must prove that, vis-a-vis the other party, it owns "a mark or trade name previously used in the United States ... and not abandoned..."].
  • To succeed in proving priority of use, the parties may not rely on their registrations per se, although they may rely on the filing dates of the underlying applications for their respective registrations to show use as of those dates.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Thus, to succeed in proving priority of use, the parties may not rely on their registrations per se, although they may rely on the filing dates of the underlying applications for their respective registrations to show use as of those dates. See Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998).
  • Use of a mark in conjunction with descriptive or generic terms, even nouns, does not render the mark a mere laudatory adjective.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • While the housemark WEATHERFORD or generic wording appears frequently with petitioner's mark FRACSURE, this does not detract from the source-identifying nature of the mark. It is well settled that a party may use more than one mark to identify a product or service and thus may choose to use its housemark in conjunction with other marks. Furthermore, use of a mark in conjunction with descriptive or generic terms, even nouns, does not render the mark a mere laudatory adjective.
  • When considering evidence of a party's alleged prior use in commerce, one must look at the total picture that the evidence presents, and not look at only the individual pieces of evidence.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • In the present case, petitioner relies on actual or technical use of its mark in commerce. When we are considering evidence of a party's alleged prior use in commerce, we must not look at only the individual pieces of evidence. Instead, we also must look at the total picture that the evidence presents.
  • Wher opposer asserts in its brief that there is no dispute as to opposer's priority, and applicant neither contests the point in his brief nor presents any argument regarding priority the question of opposer's priority to be undisputed.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Opposer also asserts in its brief that there is no dispute as to opposer's priority, and applicant neither contests the point in his brief nor presents any argument regarding priority. Therefore, to the extent opposer relies on prior use of its mark in commerce, rather than on its registrations for the mark, we consider the question of opposer's priority to be undisputed.
  • Where a party does not submit evidence demonstrating use of its mark prior to the constructive use date, this is the earliest date that it is entitled to rely on for purposes of priority.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • In this case, the application that matured into the registration at issue herein was accorded a filing date of February 28, 2007. Inasmuch as respondent did not submit evidence demonstrating use of its mark FRAC-SURE prior to this constructive use date, this is the earliest date that it is entitled to rely on for purposes of priority.
  • Where a party fails to amend its pleading even though it had been informed of the need to amend, it cannot then claim the benefits of tacking.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Defendant failed to amend its pleading even though it had been informed of the need to amend it and, therefore, it cannot now claim the benefits of tacking.
  • Where opposer's registration has been made of record, Section 2(d) priority is not an issue with respect to the goods identified in opposer's registration.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Because opposer's registration has been made of record, Section 2(d) priority is not an issue with respect to the goods identified in opposer's registration. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007).
  • Whether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • "[W]hether a particular piece of evidence by itself establishes prior use is not necessarily dispositive as to whether a party has established prior use by preponderance. Rather, one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use." West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122, 31 USPQ2d 1660 at 1663 (Fed. Cir. 1994).
  • While the volume of opposer's sales during this period was not large, we find as a matter of law that the extent of its use was sufficient to constitute use of the mark in commerce with the United States, and was not token use made merely to reserve rights in the mark.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Opposer proved that it first used its mark in the United States on December 20, 2003. To establish this date, opposer submitted the declaration of the Chairman of its Executive Board, Mr. Chote Sophonpanich, who attests that opposer made a sale of 1480 cartons of its "VITAMILK To Go" beverage product to its United States distributor on December 20, 2003; that opposer's distributor "in turn, sold those products bearing the VITAMILK mark to retail outlets around the United States;" and that opposer has engaged in more than 20 such sales. Sophonpanich declaration, para. 8.3 While the volume of opposer's sales during this period was not large, we find as a matter of law that the extent of its use was sufficient to constitute use of the mark in commerce with the United States, and was not token use made merely to reserve rights in the mark.
  • Case Finding: Applicant's argument that opposer did not use its mark in interstate commerce until 2001 is irrelevant.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • "Applicant's argument that opposer did not use its mark in interstate commerce until 2001 is irrelevant. Section 2(d) of the Trademark Act, provides in relevant part: ""No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive."" 15 U.S.C. §1052(d) (emphasis added)."
  • Case Finding: As noted above, Ms. Cahill testified that opposer has been continuously using the mark ONE TRUE FIT in connection with a wide variety of clothing products, including camisoles. Camisoles are listed in applicant's description of goods, but not that of opposer's registration. Therefore, priority is in issue with respect to camisoles, and thus opposer must prove that it used its mark ONE TRUE FIT on camisoles prior to September 21, 2004, the filing date of applicant's application.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • As noted above, Ms. Cahill testified that opposer has been continuously using the mark ONE TRUE FIT in connection with a wide variety of clothing products, including camisoles. Camisoles are listed in applicant's description of goods, but not that of opposer's registration. Therefore, priority is in issue with respect to camisoles, and thus opposer must prove that it used its mark ONE TRUE FIT on camisoles prior to September 21, 2004, the filing date of applicant's application.
  • Case Finding: Based on respondent's constructive date of first use, respondent has priority.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Thus, based on respondent's constructive date of first use, respondent has priority.
  • Case Finding: Discussion of where the mark FRACSURE is ineherently distinctive.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • We note that respondent argues at great length in its brief that petitioner's pleaded mark, FRACSURE, is not inherently distinctive and, in order for petitioner to prevail, petitioner must show that "its use created ‘secondary meaning' in the alleged mark" before respondent's priority date....There are several problems with respondent's assertion that petitioner's mark, FRACSURE, is not inherently distinctive. First, respondent does not explain what specific laudatory meaning it attributes to petitioner's mark. To the extent that respondent is arguing that petitioner's pleaded mark is, on its face, a "laudatorily descriptive" term for the services rendered, there is no evidence in the record to support this. "Fracsure" is not found in the dictionary and the record does not establish that the term has a recognized meaning in the industry other than perhaps its suggestion of reliable oil well "fracturing" services. Accordingly, it appears on the record before us to be a coined term, albeit one that is evocative of the term fracture. Finally, we would be remiss if we did not point out that the subject registration, again for nearly an identical mark and services, issued based on the mark being presumptively inherently distinctive inasmuch as there is no claim of acquired distinctiveness. With the above in mind and based on the record before us, we conclude that petitioner's pleaded mark, FRACSURE, likewise is inherently distinctive.
  • Case Finding: Evidence of petitioner's prior use to be sufficient for purposes of establishing use in commerce of the mark FRACSURE in connection with oil and gas well services, and that such use occurred prior to February 28, 2007.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • Although respondent is correct in many respects that petitioner's evidence of use is limited, this does not mean that such use is so insubstantial that it cannot be considered use in commerce or that it cannot be reasonably inferred that there has been a public association with the mark FRACSURE and petitioner's services. To the contrary, we find the evidence of petitioner's prior use to be sufficient for purposes of establishing use in commerce of the mark FRACSURE in connection with oil and gas well services, and that such use occurred prior to February 28, 2007. Ultimately, petitioner has proven priority.
  • Case Finding: For purposes of determining priority of use, applicant's date of first use is the filing date of its intent-to-use application.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • For purposes of determining priority of use, applicant's date of first use is October 10, 2006, the filing date of its intent-to-use application.
  • Case Finding: Oral testimony was not specific enough with respect to camisoles, and it is without any corroborating documentary evidence, to persuade us that opposer used its mark ONE TRUE FIT in connection with camisoles prior to the filing date of applicant's application.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Ms. Cahill's oral testimony is not specific enough with respect to camisoles, and it is without any corroborating documentary evidence, to persuade us that opposer used its mark ONE TRUE FIT in connection with camisoles prior to the filing date of applicant's application.
  • Case Finding: The cumulative effect of the aforementioned declarations (with attached exhibits) establishes petitioner's claim of prior use. That is, the totality of the evidence shows that petitioner used the mark FRACSURE in connection with its oil and gas well treatment services prior to February 28, 2007. West Florida Seafood, 31 USPQ2d at 1663. In the exhibits to the declarations, there are clear examples of petitioner's prior use of the mark FRACSURE (appearing as "FracSure") being used in connection with oil and gas well services.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • The cumulative effect of the aforementioned declarations (with attached exhibits) establishes petitioner's claim of prior use. That is, the totality of the evidence shows that petitioner used the mark FRACSURE in connection with its oil and gas well treatment services prior to February 28, 2007. West Florida Seafood, 31 USPQ2d at 1663. In the exhibits to the declarations, there are clear examples of petitioner's prior use of the mark FRACSURE (appearing as "FracSure") being used in connection with oil and gas well services.
  • Case Finding: There are two problems with defendant's attempt to tack its use of ANTHONY'S RUNWAY 84 to establish its priority: (1) defendant failed to amend its pleading pursuant to the TTAB's May 15, 2008 Order; and (2) the marks at issue are not legal equivalents.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • There are two problems with defendant's attempt to tack its use of ANTHONY'S RUNWAY 84 to establish its priority: (1) defendant failed to amend its pleading pursuant to the Board's May 15, 2008 Order; and (2) the marks at issue are not legal equivalents.
  • In the cancellation proceeding, priority is in issue.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998)(In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).
  • The filing date of a §66(a) application is the international registration date.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • FOOTNOTE 3 "The filing date of Danone's §66(a) application is the international registration date of May 22, 2007. See TMEP § 1904.01(b)."
  • In view of opposer's pleaded registrations, which are of record, priority is not in issue.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • In view of opposer's pleaded registrations for MORGAN CREEK and design, as discussed above, which are of record, priority is not in issue. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the record shows that opposer has used its mark for motion pictures, videos and CDs14 since prior to applicant's first use of its mark.
  • Pursuant to Sections 66(b) and 67, a party is entitled to a priority date of the filing date of a foreign application.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Danone claimed priority based on the December 6, 2006 filing date of the French application. Thus, pursuant to Sections 66(b) and 67, Danone is entitled to a priority date of December 6, 2006. See General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008).
  • In a case involving common-law rights, the decision as to priority is made in accordance with the preponderance of the evidence.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • In a case involving common-law rights, "the decision as to priority is made in accordance with the preponderance of the evidence." Hydro-Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987).
  • The Trademark Act requires consideration under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • In the opposition, the issue of priority has been removed by virtue of TxDOT's submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
  • Admitted by the adverse party that the other party has prior use of the mark established priority notwithstanding a previously argument to the contrary.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • Tucker has admitted that TxDOT has prior use of the mark (Request for Admissions (hereinafter "R/A") No. 72).19 Therefore, priority in TxDOT is established, notwithstanding the previously-referenced argument by Tucker asserting that TxDOT's evidence fails to show opposer's actual date of its first use of the mark on clothing. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007) (admission conclusively establishes the matter that is the subject of the request for admission; subsequent argument to the contrary in response to a motion for summary judgment insufficient to raise a genuine issue of material fact.)
  • Because the party's application has an effective filing date earlier than the other's filing date, it may rely on its effective filing date to establish priority.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Because Danone's application has an effective filing date of December 6, 2006, and that date is earlier than Precision's filing date of February 21, 2007, Danone may rely on its effective filing date to establish priority. Thus, we find that there are no genuine issues of material fact as to the issue of priority.
  • It is well settled that in the absence of any evidence of earlier use, the earliest date upon which respondent may rely is the filing date of its underlying application.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • It is well settled that in the absence of any evidence of earlier use, the earliest date upon which respondent may rely is the filing date of its underlying application. See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995).
  • In view of opposer's valid and subsisting registrations, opposer's priority with respect to the registered marks for the goods and/or services identified therein is not in issue.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In view of opposer's valid and subsisting registrations, opposer's priority with respect to the registered marks for the goods and/or services identified therein is not in issue. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • In describing the nature of the common-law services that petitioner has established via the record, the TTAB may not be bound by petitioner's identification of services in his pending application
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • We note that in describing the nature of the common-law services that petitioner has established via the record, we are not bound by petitioner's identification of services in his pending application Serial No. 78426238. Nevertheless, this description coincides with petitioner's identification in the application for services in International Class 36.
  • To establish priority on a likelihood of confusion claim brought under Trademark Act §2(d), a party must prove that, vis-à-vis the other party, it owns a mark or trade name previously used in the United States and not abandoned.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • To establish priority on a likelihood of confusion claim brought under Trademark Act §2(d), a party must prove that, vis-à-vis the other party, it owns "a mark or trade name previously used in the United States . and not abandoned.." Trademark Act Section 2, 15 U.S.C. §1052.
  • Because applicant admitted that opposer had priority and because opposer has properly made its pleaded registrations of record, Section 2(d) priority is not an issue in this case as to the marks and the goods covered by the registrations.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Because applicant admitted that opposer had priority and because opposer has properly made its pleaded registrations of record, Section 2(d) priority is not an issue in this case as to the marks and the goods covered by the registrations. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Either party may rely without further proof upon the filing date of its application as a constructive use date for purposes of priority.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • While either party may rely without further proof upon the filing date of its application as a "constructive use date" for purposes of priority, see Trademark Act § 7(c) (contingent upon registration); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994), opposer's '601 application was filed on June 9, 2004, well after the October 1, 2003, filing date for applicant's subject application, and thus provides no basis for opposer's priority.
  • Inasmuch as petitioner has not pleaded ownership of any registered trademark, petitioner must rely on his common-law use of the term as a trademark to prove priority.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Inasmuch as petitioner has not pleaded ownership of any registered trademark, petitioner must rely on his common-law use of DESIGNED2SELL as a trademark to prove priority.7 In order for a plaintiff to prevail on a claim of likelihood of confusion based on its ownership of common-law rights in a mark, the mark must be distinctive, inherently or otherwise, and plaintiff must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
  • A party that has filed an intent-to-use application may rely on the filing date of its application to establish priority.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • A party that has filed an intent-to-use application may rely on the filing date of its application to establish priority. See Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1845 n. 7 (TTAB 1995) (constructive use provisions may be used both defensively and offensively to establish priority); see also, Zirco Corp. v. American Telephone & Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (right to rely on constructive use date comes into existence with filing of intent-to-use application).
  • An applicant is entitled to claim a date of priority when it holds an international registration, makes a request for extension of protection to the U.S., includes a claim of priority based on a right of priority under Article 4 of the Paris Convention, and the date of the international registration is within six months of the filing date of the application underlying the international registration.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Section 67 of the Trademark Act, 15 U.S.C. § 1141g, states that an applicant is entitled to claim a date of priority when it holds an international registration, makes a request for extension of protection (application) to the U.S., includes a claim of priority based on a right of priority under Article 4 of the Paris Convention for the Protection of Industrial Property, and the date of the international registration is within six months of the filing date of the application underlying the international registration.
  • Discussion of the use of deposition testimony and appliation filing date for purposes of priority.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • In this case, and as noted above, the application that matured into the registration at issue herein was accorded a filing date of April 15, 2004. Respondent introduced testimonial and documentary evidence that its actual first date of use in commerce of the DESIGNED TO SELL mark in connection with its identified services was January 1, 2004. (Dingley depo. at 11:20-21, and Ex. 4). This date comports with the one alleged in the underlying application, and is the earliest date upon which respondent is entitled to rely for purposes of priority.
  • Section 66(b) provides that a Section 66(a) application shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following: (1) The international registration date, if the request for extension of protection was filed in the international application. (2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date. (3) The date of priority claimed pursuant to section 67.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Section 66(b), 15 U.S.C. § 1141f(b), provides that a Section 66(a) application:
        ...shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following: (1) The international registration date, if the request for extension of protection was filed in the international application. (2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date. (3) The date of priority claimed pursuant to section 67.
  • Affirmative defense regarding descriptiveness of opposer's mark, raised for the first time in applicant's brief, was untimely and not considered by the TTAB.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Respondent has not raised an issue as to the distinctiveness of petitioner's mark or otherwise put petitioner on notice of this defense, and therefore we find that the mark is distinctive. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from applicant, opposer's mark deemed distinctive); The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, note 5 (TTAB 1991) (affirmative defense regarding descriptiveness of opposer's mark, raised for the first time in applicant's brief, was untimely and not considered by the Board).
  • A party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites which create a public awareness of the designation as a trademark identifying the party as a source.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • A party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites which create a public awareness of the designation as a trademark identifying the party as a source. See Trademark Act §§2(d) and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
  • The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • However, opposer's recitation of dates of use in its application does not constitute evidence of opposer's use or priority:
        The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony.
        Trademark Rule 2.122(b)(2).
  • A motion for summary judgment may be granted, contingent upon an application maturing into a registration.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Accordingly, Danone's motion for summary judgment is granted, contingent upon application Serial No. 79041120 maturing into a registration.4 FOOTNOTE 4 "Section 66(b), 15 U.S.C. § 1141f(b), confers the same rights as those specified in Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c). Section 7(c) provides that filing an application for registration on the Principal Register establishes constructive use and nationwide priority, contingent upon issuance of a registration. Thus, we do not enter judgment at this time, but rather grant Danone's summary judgment motion contingent on the issuance of a registration in application Serial No. 79041120."
  • Case Finding: But even if applicant admitted to opposer's use of the marks on some goods, it is ultimately of no help to opposer, because opposer has not proven, nor has applicant admitted, when such use commenced. Unlike a case in which opposer properly introduces trademark registrations into the record, it was opposer's burden to prove its priority of use by a preponderance of the evidence.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • But even if applicant admitted to opposer's use of LIFE ZONE on some goods, it is ultimately of no help to opposer, because opposer has not proven (nor has applicant admitted) when such use commenced. Unlike a case in which opposer properly introduces trademark registrations into the record, see King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974), it was opposer's burden to prove its priority of use by a preponderance of the evidence. Without testimony or other evidence on this point, we cannot presume that opposer's use predates the filing date of the subject application, or indeed whether it even predates the filing of this opposition proceeding.
  • Case Finding: Without evidence to show that they were ever performed as a regular or recurring activity associated with the mark, the TTAB declined to find that petitioner has established common-law rights in the DESIGNED2SELL mark for indoor or outdoor services related to decorating or home improvement.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • However, there is no evidence that this ever constituted a regular or recurring activity such as to create common-law rights in the DESIGNED2SELL mark for those services. (See G. Giersch depo. at 114:21-24). On the contrary, petitioner estimated that "managed staging services" comprised probably "95 percent" of his reported income for 2001-2002. (B. Giersch depo. at 105:14-17; Ex. 29), and 90% for 2002-2003 (Id. at 111:3-11; Ex. 30). Without evidence to show that they were ever performed as a regular or recurring activity associated with the mark, we decline to find that petitioner has established common-law rights in the DESIGNED2SELL mark for indoor or outdoor services related to decorating or home improvement.
  • Failure to identify a specific day of that month, the earliest date on which a party could rely for priority for its "marketing" would be the last day of the specified time period.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • FOOTNOTE 2 "In Precision's brief in opposition to the motion for summary judgment, Precision's responses to Danone's first set of interrogatories, and Precision's notice of opposition in Opposition No. 91184174, Precision has relied on February 2007 as the point in time when it began "marketing" its FRUITOLOGY goods. In view, however, of Precision's repeated failure to identify a specific day of that month, the earliest date on which Precision could rely for priority for its "marketing" (should it be able to show that "marketing" was actual use or use analogous to trademark use) would be February 28, 2007, the last day of the specified time period. EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982) (documentary evidence showed first use in 1977, the month and day were unknown, therefore, the Board could not presume any date earlier than the last day of the proved period). See also Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB 1985) (evidence established first use in 1968-1969, therefore December 31, 1969 is date of first use)."
Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010) Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010) Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010) Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010) Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008) Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436, (TTAB 2006) Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006) CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) Fram Trak Industries, Inc. v. WireTracks LLC, Cancellation No. 92043947, (TTAB 2006) Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Opposition No. 91122072, (TTAB 2005) Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Grand Total
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008) 1
General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) 1
Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) 2
B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500 (TTAB 2007) 1
First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) 1
Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007) 1
Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006) 1
Maids to Order of Ohio, Inc. v. Maidto- Order, Inc., 78 USPQ2d 1899 (TTAB 2006) 1
International Bancorp, L.L.C. v. Societe des Bains de Met et du Cercie des Etrangers Monaco, 329 F.3d 359, 66 USPQ2d 1705 (4th Cir. 2003) 1
NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003) 1
Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) 4
Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002) 1
Planetary Motion v. Techsplosion, 261 F.3d 1188, 1194, 59 USPQ2d 1894 (11th Cir. 2001) 1
In re Dial A Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) 1
Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9th Cir. 1999) 1
Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998) 5
Buti Fashion World Company v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2nd Cir. 1998) 1
Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998) 3
Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998) 1
Lucent Information Management Inc. v. Lucent Technologies Inc., 986 F.Supp 253, 45 USPQ2d 1019 (D.Del. 1997) 1
United We Stand America Inc. v. United We Stand, America, NY Inc., 128 F.3d 86, 44 USPQ2d 1351 (2nd Cir. 1997) 1
Salacuse v. Ginger Spirits Inc., 44 USPQ2d 1415 (TTAB 1997) 1
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996) 2
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) 4
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995) 1
Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840 (TTAB 1995) 4
O-M Bread Inc. v. United States Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) 1
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995)  1
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995) 1
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660 (Fed. Cir. 1994) 3
Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993) 1
Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993) 1
Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711 (TTAB 1993) 2
National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 826 (TTAB 1993) 1
The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991) 1
Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991) 2
Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991) 5
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) 1
Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990) 3
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990) 1
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989) 1
BellSouth Corp. v. Planum Technology Corp., 14 USPQ2d 1555 (TTAB 1988) 1
Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154 (TTAB 1987) 1
Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987) 2
Alabama Board of Trustees v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) 1
Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154 (TTAB 1985) 2
Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905 (TTAB 1985) 2
In re Alfred Dunhill Ltd., 224 USPQ 501 (TTAB 1984) 1
All English Lawn Tennis Club (Wimbledon) Ltd. v. Creations Aromatiques Inc., 220 USPQ 1069 (TTAB 1983) 1
Mother's Restaurants Inc. v. Mother's Other Kitchen Inc., 218 USPQ 1046 (TTAB 1983) 1
Sanyo Watch Co. v. Sanyo Electric Co., Ltd., 691 F.2d 1019, 215 USPQ 833 (Fed. Cir. 1982) 1
EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597 (TTAB 1982) 2
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) 7
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) 1
American Standard Inc. v. AQM Corp., 208 USPQ 840 (TTAB 1980) 1
Allied Mills Inc. v. Kal Kan Foods Inc., 203 USPQ 390 (TTAB 1979) 1
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979) 1
La Maur Inc. v. International Pharmaceutical Corporation, 199 USPQ 612 (TTAB 1978) 1
In re Flex-O-Glass Inc., 194 USPQ 203 (TTAB 1977) 1
Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976) 1
GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576 (TTAB 1976) 1
SCOA Industries Inc. v. Kennedy & Cohen Inc., 188 USPQ 411 (TTAB 1975) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 35
Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974) 1
4U Co. of America Inc. v. Naas Foods Inc., 175 USPQ 251 (TTAB 1972) 1
Jim Dandy Co. v. Martha White Foods Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972) 1
Compania Insular Tabacalera v. Camacho Cigars Inc., 167 USPQ 299 (TTAB 1970) 1
Powermatics Inc. v. Glebe Roofing Products Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965) 3
Shunk Manufacturing Company v. Tarrant Manufacturing Company, 137 USPQ 881 (CCPA 1963) 1
Gaylord Bros. Inc. v. Strobel Products Co., 140 USPQ2d 72 (TTAB 1963) 1
Vaudable v. Montmartre Inc., 123 USPQ 357 (NY Sup. Ct. 1959) 1
Grand Total 3 1 3 5 3 12 1 6 6 1 1 5 2 5 2 2 1 1 1 1 4 7 3 1 1 1 1 1 3 8 1 4 1 1 1 2 1 2 4 2 2 1 1 2 13 1 5 2 3 1 1 1 1 145

Sec. 1057. Certificates of registration

  1. (a) Issuance and form
    Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the Patent and Trademark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received in the Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration.
  2. (b) Certificate as prima facie evidence
    A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
  3. (c) Application to register mark considered constructive use
    Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
    1. (1) has used the mark;
    2. (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
    3. (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.
  4. (d) Issuance to assignee
    A certificate of registration of a mark may be issued to the assignee of the applicant, but the assignment must first be recorded in the Patent and Trademark Office. In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.
  5. (e) Surrender, cancellation, or amendment by registrant
    Upon application of the registrant the Director may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the Patent and Trademark Office. Upon application of the registrant and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Patent and Trademark Office and upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof.
  6. (f) Copies of Patent and Trademark Office records as evidence
    Copies of any records, books, papers, or drawings belonging to the Patent and Trademark Office relating to marks, and copies of registrations, when authenticated by the seal of the Patent and Trademark Office and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have such copies.
  7. (g) Correction of Patent and Trademark Office mistake
    Whenever a material mistake in a registration, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mistake, shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration certificate and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Director a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
  8. (h) Correction of applicant's mistake
    Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registration as to require republication of the mark.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

 

 

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

Click to view the entire TTAB Opinion (PDF format).