Articles Posted in Common Law Rights & Priority

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In a recent Board Decision, the Petition for Cancellation was dismissed because Petitioner relied on its common law rights while alleging likelihood of confusion and priority, and was unable to prove acquired distinctiveness (secondary meaning) for its mark LITTLE NOTES for announcement cards; greeting cards; note cards; postcards and greeting cards; printed invitations. See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on the Supplemental Register. Both parties used its mark for postcards, greeting cards and note cards, among other goods in class 016.

There was no dispute that the parties were using the identical term, LITTLE NOTES for goods that were in part identical. Therefore, the primary issue in this cancellation proceeding was priority. The Petitioner is required to prove it owned proprietary rights in a mark similar to a registered mark. West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994). Proprietary rights may arise from a variety of scenarios such as 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 Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Petitioner’s mark must be distinctive to prevail. See our web page entitled, What is Acquired Distinctiveness & Secondary meaning for more on the topic. Distinctiveness can be inherent or proven through evidence of acquired distinctiveness (secondary meaning). If the term is not distinctive, no trademark rights exist. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Since the Board determined that Petitioner’s mark was highly descriptive of the identified goods, its burden of establishing secondary meaning is comparably high.

Acquired distinctiveness may be proven through consumer surveys, testimony, declarations, or though circumstantial evidence such as length, degree and exclusivity of use, amount and type of advertising, the amount of sales, the number of customers, intentional copying, and unsolicited media coverage. Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018). The Petitioner submitted evidence of customer reviews, but the reviews did not prove that consumers recognize the trademark LITTLE NOTES as a source identifier. In addition, there was a declaration submitted attesting to use in commerce since September 4, 2013. If the mark was not determined to be highly descriptive, perhaps this type of evidence could have been accepted as prima facie evidence of acquired distinctiveness. But, the Board pointed out that almost ten years of substantially exclusive use here is not particularly persuasive given the degree of descriptiveness.

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In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) denied a petition to cancel for failure of the petitioner to prove technical trademark use or use analogous to trademark use before respondent’s priority date, see JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022) [precedential]. The respondent applied to register the mark HAPPIEST HOUR in standard characters for bar and restaurant services and was successful. About two years after the mark registered, the petitioner filed an application for the mark THE HAPPIEST HOUR for the identical services (bar and restaurant). The Examining Attorney assigned to the petitioner’s application refused the application on 2(d) likelihood of confusion grounds. Subsequently, the petitioner filed a cancellation proceeding based on priority and likelihood of confusion.

In petitioner’s application there was a claim for use of the trademark in commerce in October 2014 (no day was indicated). However, once the application was refused, the petitioner amended its first use date to September 7, 2014. The parties agreed that the primary issue that needed to be resolved was priority. The burden of proof for demonstrating priority rights is placed on the petitioner here since the respondent/registrant can rely on its certificate of registration for prima facie evidence of the validity of the registration and continued use of the mark. See 15 U.S.C. § 1057(b)….” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) quoted in NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, *13 (TTAB 2021). The respondent is entitled to rely on its filing date of the application since it matured to a registration as a constructive use date. See our web page entitled, Priority Determinations in Trademark Law, Constructive Use Priority for more on this topic.

The respondent’s priority date is October 6, 2014. To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). The petitioner can prove prior rights in several ways: (1) prior common law trademark use; (2) through a prior registration; (3) prior use as a trade name; (4) prior use analogous to trademark use; or (5) any other use that can establish proprietary rights. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) cited in DeVivo v. Ortiz, 2020 USPQ2d 10153. Also, see our web page entitled, Priority Determinations Based on Common Law to learn more about how to prove priority rights without a trademark registration. Typically, the petitioner must prove priority by a preponderance of evidence.

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If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in the registration; (3) a date of constructive use of the mark as of the filing date of the application; (4) the ability to bring an action concerning the mark in federal court and to rely on the presumptions of ownership and exclusive right to use; and (5) acquiring “incontestable” status for the goods and services identified in the application, subject to certain statutory defenses.

There are additional rights granted to marks on the Principal Register, but the ones listed above apply only to marks on the principal register and not to marks on the supplemental register. The additional rights which apply both to the principal and supplemental register include: (1) use of the registration symbol ® with the mark; (2) filing suit in federal court for infringement, but note that the owner of the supplemental registration must prove it owns a proprietary interest in the mark by showing the mark has acquired secondary meaning before the adverse party’s priority date; (3) protection against registration of a confusingly similar mark under the Trademark Act, but marks on the principal register will receive broad protection while marks on the supplemental register will generally receive narrow protection based on how descriptive the mark is for the identified goods and services; and (4) the registration can be used as a basis for filing in a foreign country under the Paris Convention and other international agreements.

Regarding challenges before the Board (aka TTAB), the owner of a supplemental registration will have standing to oppose, but will still have to prove secondary meaning/acquired distinctiveness. Since marks on the supplemental register are presumed to be merely descriptive, evidence of secondary meaning must be submitted to the TTAB. If such evidence is not submitted, the Board will find against the owner of the supplemental registration and dismiss the notice of opposition with prejudice. See Otter Products LLC, v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012).

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Recently I had the opportunity to virtually meet with David Gooder, the Commissioner for Trademarks of the United States Patent & Trademark Office. It was a unique opportunity and it afforded me the time to discuss an issue with the Commissioner that I believe has caused many of my clients to misunderstand the Examining Attorneys’ role at the Trademark Office. There is a lack of information on the USPTO website pertaining to common law rights. I find myself time and time again explaining to my clients why it is so important to conduct full U.S. clearance searches (comprehensive trademark research) in advance of filing a trademark application.

Many prospective trademark applicants wrongly assume that the Examining Attorneys at the Trademark Office when conducting trademark searches for the applicant’s proposed mark will search common law rights (use rights/unregistered rights) in addition to the registered and pending marks. This is not true. The Examining Attorneys at the USPTO do not have the resources to conduct common law searching. Therefore, if an applicant does not conduct comprehensive research in advance of the trademark filing, it’s possible to invest the time and resources to register one’s mark on the federal level, but still be infringing on a third party’s trademark rights and thus be vulnerable to being a named defendant in litigation.

The United States has a first to use trademark system, not a first to file system like many other countries. This means that common law rights (use rights) matter and cannot be ignored. If a third party possesses senior common law rights, a proceeding can be brought at the Trademark Trial and Appeal Board to either oppose a pending application during the publication period or cancel a trademark registration. The owner of common law rights may NOT have filed or registered its trademark but has simply used the mark in commerce before the applicant filed its trademark application with the United States Patent & Trademark Office.

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The case I am blogging about today, illustrates why federal registration is so important and how failing to register a mark can have devastating effects for your business. See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained despite the Applicant having senior common law rights. The Applicant was seeking to register the mark JEAN LEON’S LA SCALA for restaurant and cafe services and the registrant filed a Notice of Opposition. The Registrant/Opposer owned the mark JEAN LEON for wines. The Applicant opened a restaurant under the name JEAN LEON’S LA SCALA in Beverly Hills and started using the mark in 1962 but did not register the mark.

Clearly Applicant is the prior user of the mark at common law for restaurant services. However, that fact does not help Applicant with regard to the issue of priority in the opposition. Section 2(d) of the Trademark Act prohibits registration of a trademark if a mark resembles another mark as to cause confusion. See 15 U.S.C. §1052(d). One must remember that the policy behind Trademark law is not only to prevent consumer confusion, but it is also to encourage registration of marks.

The United States Court of Appeals for the Federal Circuit declared in part: “the board’s requirement that the registrant-opposer also be a prior user impermissively negates the statutory distinction (“or”) in Section 2(d) between a registered mark and a previously-used-but-unregistered mark, would permit simultaneous registration of the same mark for the same goods to different parties, and disregards–in effect conflicts with–Patent Office Rule 2.106(b), which forbids any attack (other than a request for cancellation) on the validity of a registration in an opposition;”, see King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974). Therefore, Applicant’s prior use at common law is irrelevant to the question of whether Applicant can register its mark with the USPTO.

This highlights an important lesson that a senior first user must either oppose a confusingly similar mark when it publishes, or initiate a cancellation proceeding within five years from the registration date, or else the first user can lose the opportunity to effect cancellation. The first user of the mark is then penalized by the law and is unable to register its mark. However, the right to exclusive use may be determined in district court. If an opposition is sustained, then the Applicant-senior user is forced to undertake the financial burden to initiate a court action.

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If the parties are disputing priority rights, and one party is relying on use-analogous-to-trademark use or trade name use, public use of the mark is necessary. Although, technical trademark use is not necessary another standard is applied to determine if there has been a sufficient and substantial impact on the purchasing public to show proprietary rights. See our blog post entitled, Common Law Rights And Use Analogous To Trademark Use, where we define technical trademark use for both goods and services.

To prevail in a priority dispute, the party attempting to demonstrate use-analogous-to-trademark use must submit evidence to show use of the trademark created an association in the minds of the relevant purchasing public between the mark and the goods/and or services. For example, if you are submitting evidence of use of the mark on a live website, you must also show how many users visited the site to demonstrate the extent of public exposure. Something more than a de minimis public association of the term with the goods or services is required. Great Seats, Inc. v. Great Seats, Ltd., Opposition No. 91189540 (August 12, 2013). Prior case law demonstrates that mere sporadic, minimal use of a mark generally is insufficient as a basis for prevailing in a priority dispute. See Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); Lever Brothers Co. v. Shaklee Corp., 214 USPQ 360 (TTAB 1982).

For trade name use, something more than incorporation must be shown. There needs to be open and public use of the name before proprietary rights can accrue. See Dynamet Tech. v. Dynamet, Inc., 593 F.2d 1007, 201 USPQ 129 (CCPA 1979). The use must be calculated to come to the attention of customers and prospective customers. A party can tack this type of use on to subsequent technical trademark use for purposes of prevailing in a priority dispute. See Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985). It is common for a party to submit evidence of trade name use in advertising, promotional material, brochures, social media, on letterhead, envelopes, invoices, annual reports, and on websites. If trade name use is of the type to create an association with the purchasing public between the mark and the goods and/or services, then this could establish trademark priority. TutorTape Laboratories, Inc. v. Halvorson, 155 USPQ 268 (TTAB 1967).

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In the United States trademark common law rights are significant rights that cannot be overlooked. Our trademark system recognizes legal rights from trademark registration and from trademark use in commerce. Common law trademark rights can be used to prove priority in a priority determination and such rights can be the basis to oppose a trademark application or to cancel a trademark registration. In addition, a party in a trademark dispute does not have to demonstrate technical trademark use to prevail in an opposition or cancellation proceeding. Instead, a party can rely on “use analogous to trademark use”. See our Web page entitled, Priority Determinations Based on Common Law Use, where we discuss how common law rights must be pleaded in the Notice of Opposition or the Petition to Cancel.

Technical trademark use is the type of use required to file a federal trademark application with the United States Patent & Trademark Office (“USPTO”). This means for goods the trademark must be placed on a container, the display associated with the product, the tag, label, packaging or associated documents. The goods have to be sold or transported in “commerce” as defined by the Trademark Act.

For services, there must be use in the sale or advertising of the services and the services must be rendered in commerce. Use analogous to trademark use is a looser requirement. Examples of this type of use would include pre-sales activities, use at a trade show, use in promotion or advertising, use in catalogs or brochures, use in trade publications, direct mail use, use directed at prospective purchasers, or trade name use. Use analogous to trademark use has to have an impact on consumers and prospective purchasers to create an association between the mark and the goods and services in the minds of the public. This association must have been created with more than an insubstantial number of potential consumers. The use must be visible to the public and if the public exposure is lacking, the use will not be sufficient even for a priority determination.

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Janco, LLC (the “Applicant”) applied to the United States Patent & Trademark Office (the “USPTO”) to register the mark FLATIZZA for pizza in international class 30. Doctor Associates, Inc. (the “Opposer”) filed an opposition with the Trademark Trial and Appeal Board (“the Board” or the “TTAB”) claiming prior use of the mark FLATIZZA for flat sandwiches. Opposer claimed that the Applicant did not use the mark in “commerce” prior to filing its trademark application. If Opposer can prove this allegation the application will be deemed void ab initio.

The parties do not contest that the marks are confusingly similar and that the goods are related. Therefore, the only issue to resolve in this matter is who maintains priority of use over the mark FLATIZZA. Applicant filed its trademark application on February 24, 2014. At this time, Applicant owned one restaurant in a single location. Under the Trademark Act Section 1(a) the owner must use the trademark in “commerce” and “commerce” has a legal definition. The definition includes the following types of commerce: (1) interstate; (2) territorial (commerce within a territory of the United States, Guam, Puerto Rico, American Samoa or the U.S. Virgin Islands or between the U.S. and a territory of the U.S.); and (3) between the United States and a foreign country. Commerce within one state only will not qualify as a basis for filing a federal trademark application unless it impacts one of the three types of commerce that Congress can regulate. If there is only intrastate commerce, see our web page entitled, State Trademark Registration, for details on how to file a state application.

In prior holdings, courts and the Board have found that a single restaurant location using its mark for restaurant services is engaged in commerce that Congress can regulate. See Larry Harmon Picture Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), where the court held that a single restaurant location used its mark in commerce based on customers traveling across state boundaries to reach the restaurant location. In that case, it was shown that the restaurant was approximately one hour from a city that contained a population from three different states and that the restaurant had been featured in publications from different states. The Court concluded that while there is no requisite level of interstate commerce required before filing a federal trademark application, some use in commerce must be shown.

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Failure to conduct a proper trademark clearance search can cause significant legal issues for a trademark owner at some point in the future. It is our practice to continually reiterate and encourage our clients to take the time to conduct a proper full U.S. trademark search before filing an application with the United States Patent & Trademark Office (“USPTO”). A recent case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) illustrates why this due diligence is so important to a trademark owner. See Daniel P. Matthews v. Black Clouds, Cancellation No. 92058978 (TTAB July 31, 2015).

On April 8, 2014, the Petitioner based on his common law rights in the mark THE BLACK CLOUDS for audio and video recordings via hard media and for streaming and downloading digital music, petitioned the TTAB to cancel a registration for the mark BLACK CLOUDS. The registration for BLACK CLOUDS, among other goods, identified audio and video recordings featuring music and artistic recordings. Petitioner claimed priority of rights and likelihood of confusion.

The Petitioner made a motion for summary judgment. This type of motion is made pretrial and it is intended to prove to the Board that there is no genuine dispute of material fact. The party filing a summary judgment motion is hoping to dispose of the matter early in the proceedings. The burden falls on the moving party to meet a certain level of proof and if met, the onus shifts to the respondent to demonstrate that there are facts in genuine dispute that must be resolved at trial. In this case the petitioner had to prove that it had priority rights in the mark THE BLACK CLOUDS and that use of the marks simultaneously would be likely to cause confusion, mistake or deceive consumers.

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A recent decision of the Trademark Trial and Appeal Board (the “Board”) highlights what the Board looks for when determining which user of the trademark has priority of use. See Parley, LLC v. Vi-Jon, Inc., Cancellation No. 92055751 (February 27, 2015). One common issue often raised in cancellation proceedings is who is the senior user of the trademark. This recent Board decision reminds trademark owners that use in commerce is a legal term that a trademark owner may not be able to satisfy if sales of the goods were token sales made to personal friends or relatives.

In this case, Vi-Jon Inc. (the “Respondent”) owns a registration for the mark DIP-IT in standard characters for nail polish remover. Parley LLC (the “Petitioner”) claims prior use of and ownership of a pending trademark application for an identical mark for identical goods and other related nail products. Petitioner alleges that Respondent’s use of the mark will cause a likelihood of confusion with Petitioner’s mark. Petitioner further alleges that his trademark application was refused based on a likelihood of confusion with Respondent’s registered mark for DIP-IT. Respondent denied the allegations in the Petition, but admitted that its first use of the trademark was on October 25, 2010. In fact, the Respondent was able to prove that he did continuously use the trademark DIP-IT for nail products since October 25, 2010. The pressing issue in this case was could the Petitioner establish a priority use date earlier than October 25, 2010.

Tuan Nguyen M.D. is one of the founders of the Petitioner. He and his family have been in the nail industry since 1996. During the first week of October 2010, the Petitioner alleged that he started to promote its nail products on its website and later promoted DIP-IT goods at trade shows. However, the receipts produced by the Petitioner in connection with participation in a nail tradeshow indicated that the tradeshow occurred in 2011 and not 2010. Additional receipts produced by Petitioner showed sales of DIP-IT nail products in 2011 and 2012.

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