Why You Should Never Delay Registering Your Trademark

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 See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained despite the Applicant having senior common law rights.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.

Once, the Board determined priority, it proceeded to assess whether there was a likelihood of confusion between Applicant’s mark JEAN LEON’S LA SCALA for restaurant and cafe services and Registrant’s mark JEAN LEON for wines. The Board focused on the second duPont factor. The goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that goods [and services] emanate from the same source.” Coach Servs. Inc., v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012).  Common types of evidence to show relatedness include (1) use-based registrations of the same mark for both Opposer’s goods and the Applicant’s services; (2) websites showing the same source sells both Opposer’s goods and Applicant’s services; (3) news articles showing the goods and services are used together or by the same purchasers; or (4) advertisements showing the subject goods and services are advertised together or offered by the same manufacturer or dealer under one brand. See our webpage entitled, How To Prove The Relatedness Of The Goods or Services, for more on this topic.

However, if the relatedness of the goods and services is not evident, “something more” than a showing that the goods and services are offered together is required. See In re St. Helena’s Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. The Board required “something more” to be demonstrated here because restaurant services and wine products are not necessarily related. Opposer met the “something more” standard by submitting 37 use-based registrations identifying wine and restaurant services under a single mark, six use-based registrations of well known people using their names to brand both wine and restaurant services, website evidence showing a single mark is used for private-label wines and restaurant services, and lastly Applicant’s restaurant had served the Opposer’s wines in the past. The Board sustained the opposition even though the Applicant was the prior user at common law. This case underscores the significant benefits of trademark registration. Kindly contact the firm, if you wish to register your mark with the Trademark Office.