TTAB Precedent: Petitioner Fails To Prove Use Analogous To Trademark Use

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.

However, here since the petitioner amended its first use date in its application, its proof must be clear and convincing. See Hydro-Dynamics v. Putnam, 1 USPQ2d at 1773-74 (heavier burden imposed where applicant seeks to prove date of first use earlier than stated in its application). This certainly seems fair especially in a case like this, where the petitioner’s original date of first use was after the respondent’s priority date. Clear and convincing evidence may include declaration testimony.

Use in commerce for a service mark will require that the mark be used or displayed in the sale or advertising of services and [2] the services are rendered in commerce. Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042 (Fed. Cir. 2015). Petitioner could not prove that the restaurant had the trademark displayed on any signage before respondent’s constructive use date. Nor did petitioner prove that the menus displayed the mark prior to October 6, 2014. Testimony regarding events of years ago without documents to corroborate such events is insufficient to prove the underlying facts by clear and convincing evidence. Once the Petitioner failed to prove technical trademark use, an attempt was made to satisfy the standard for analogous use.

The Federal Circuit has stated that, “[b]efore a prior use becomes an analogous use sufficient to create proprietary rights, the petitioner must show prior use sufficient to create an association in the minds of the purchasing public between the mark and the petitioner’s goods.” T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1883 (Fed. Cir. 1996). Moreover, there has to be a substantial impact on the purchasing public. In the case at bar, this proof can be shown by a preponderance of evidence because the petitioner can rely on its original date of first use and still demonstrate analogous use. The petitioner presented a press release and two newspaper articles to demonstrate analogous use. The press release was not properly introduced into evidence and was not considered. In the two news articles, the trademark THE HAPPIEST HOUR, was buried in the text of the articles. The Board concluded the two articles did not create the requisite association between the mark as an indicator of a particular source and the restaurant services. Ultimately, the Board denied the petition to cancel. Issues involving priority rights can be complex. If you have questions pertaining to trademarks and priority rights, please contact the firm for a courtesy consultation.