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Evidence Of Third-Party Use and Third-Party Registrations

Trademark applicants must be cautious when relying too heavily on third–party uses. This is an area where an experienced trademark attorney will be able to guide a trademark applicant in the right direction. Do not make the mistake of arguing that the existence of third-party registrations with similar terms can justify the registration of another confusingly similar trademark. Examining Attorneys utilize third-party registrations to show that the Registrant’s goods and the Applicant’s goods often have been covered in the same registration under the same trademark. The Examining Attorney submits this proof when refusing an application based on likelihood of confusion to show the relatedness of the goods or services and that the goods or services are of the type that may originate from a single source.

Applicants can also use third-party registrations as probative evidence as to the meaning of a mark or a term in the trademark. Essentially, the argument is that a term in the mark has a well-known meaning and this has been recognized by the Trademark Office by registering marks containing this common term for closely related goods. Other elements (apart from the common term) in the marks distinguish the trademarks. Thus, a finding of likelihood of confusion based on the common term is a flawed determination. In other words, third- party registrations may be relevant to show that the mark or a portion of the mark is descriptive, suggestive, or frequently used so that consumers will look to other elements to distinguish the source of the goods or services. See Plus Products v. Star-Kist Foods, Inc. 220 U.S.P.Q. 541, 544, 1983 WL 51884 (TTAB 1983). Evidence of third-party use falls under the sixth factor of the du Pont factor analysis. When determining likelihood of confusion, an Examining Attorney or the Board will consider the number of similar marks in use on similar goods or in use with similar services. However, third-party registrations do not prove the mark is in use.

Further evidence must be presented to demonstrate this fact. For example, an Applicant may submit testimony or declarations showing that through telephone contact it was verified that a number of the marks in the registrations or in the website evidence are in fact in use for the goods or services indicated. See Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 1271 USPQ2d (TTAB 2009), aff’d 415 Fed. Appx. 222 (Fed. Circ. 2010), where there was evidence of third party registrations and telephone listings that showed extensive use of the name Anthony for Italian restaurants and pizzerias. The evidence was persuasive because 29 of the listings were proven to be currently in use in commerce and this was confirmed via telephone. As a result, the Board determined that the name “Anthony” in connection with restaurant services would be given a restricted scope of protection.

An applicant may be able to demonstrate that common use of a term by third parties in the same industry could support a claim that the mark is conceptually weak. See Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F.Supp. 2d 1214, 73 U.S.P.Q.2d 1287 (C.D. Cal. 2004), aff’d, 114 Fed. Appx. 921 (9th Cir. 2004). This is sometimes referred to as the crowded field doctrine. See In re Unidos Financial Services, Inc. Serial No. 77126814 [not precedential], where it was held that 25 third-party registrations for trademarks having the term “united” as an element for financial services was conclusive evidence the element is a weak formative.  An applicant can also produce websites using the subject term in the same industry and this type of evidence will assist in showing the weak formative theory. It can be argued that marks commonly used on the same type of goods are only entitled to a narrow scope of protection.  See also, our blog post entitled TTAB’s Reversal-BENDASTIX Not Confusingly Similar To BENDAROOS And BENDAMODEL, where the registered mark containing a descriptive term was given a narrow scope of protection.

Regarding a technical point, it is important to note that the Trademark Trial and Appeal Board (TTAB or the Board) does not take judicial notice of third-party registrations. To properly make a third-party registration part of the record, copies of the registrations must be submitted. A listing of registrations is not proper. An applicant or his or her counsel should submit the electronic equivalent of soft copies taken from one of the United States Patent & Trademark Office’s (USPTO) automatic systems. Examples of these systems include: (1) TESS (Trademark Electronic Search System, and (2) TSDR (Trademark Status and Document Retrieval). See Raccioppi v. Apogee Inc., 47 U.S.P.Q.2d 1368, 1998 WL 417267 (TTAB 1998). Keep in mind that the submission of a trademark search report is not proper evidence of third-party registrations. If you have questions, regarding how third-party use or how third-party registrations may bolster your arguments in favor of registration of your trademark application, please contact the Law Offices of Joseph C. Messina to speak with a NY trademark attorney.