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).
The party attempting to prove use-analogous-to-trademark use can do so through indirect evidence. The Board will infer the fact of public identification. See The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No.91207409 (October 15, 2013). In Spendology, the applicant attempted to show a use date earlier than his constructive use date through use-analogous-to-trademark use, but failed to offer evidence to meet the requirements. The applicant introduced a budgeting survey and budget presentation, neither referenced the mark SPENDOLOGY. There was evidence of a website, but it failed to reference the identified services. There was social media use, but the Board held that social media use alone was not adequate to prove use-analogous-to-trademark use without evidence to show how much consumer exposure resulted from such use. There needs to be evidence of use of the mark in commerce with the services directed to the purchasing public. It should be noted that oral testimony may be enough to establish priority if it is clear, convincing and uncontradicted.
The Board found use-analogous-to-trademark-use in Cake Divas v. Charmaine V. Jones, Opposition No. 91173301 (February 23, 2010). In this case, the Applicant provided evidence of a television appearance in 1993, advertisements dating back to 1993, magazine articles and website use in 1996. This was a clear case of sufficient use because of the nationwide public exposure of the mark with the goods, creating a public identification. Although the use commenced with a two word mark CAKE DIVA, the Board held that the applied for mark CAKEDIVE was the legal equivalent.
The Board has held that an intent-to-use applicant may also tack on use-analogous-to-trademark use in a priority dispute. See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998), where the applicant defeated the opposer by proving prior common law rights. The Board in this case went as far as stating “[M]oreover, whether or not this prior use is strictly intrastate in nature is inconsequential”. In this case, there was an issue of first impression regarding what if a significant delay occurs between use-analogous-to-trademark use and the filing of the intent-to-use application. The Board held that if that scenario arises, then the applicant must demonstrate its continued interest in the mark and the continued ongoing commercial activities involving the mark that result in public identification. Priority disputes are fact intensive and require detailed analysis. If you have questions regarding trademark use and whether a sufficient association has been created with the purchasing public, please call us for a courtesy consultation.