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.