The Trademark Trial and Appeal Board (TTAB) sustained an opposition filed by NetCloud, LLC and refused registration of the mark NETCLOUD by the United States Patent and Trademark Office (USPTO). Applicant East Coast Network Services, LLC sought to register the mark for computer related services, generally.
Following publication, opposer NetCloud, LLC opposed registration on the grounds of liklihood of confusion and priority under the Lanham Act. According to the TTAB, the opposer was involved in a similar industry as the trademark applicant and was using an identical mark.
With respect to priority, the opposer had not sought to register its mark. Consequently, the opposer had the burden of proof of establishing prior common law trademark rights. While applicant was entitled to constructive use from the filing date of its trademark application and opposer did not form NetCloud, LLC until after that date, the record demonstrated that the opposer acquired all rights to the common law trademark from another party who was using the same prior to applicant’s filing date.
Nonetheless, applicant argued that any use prior to the organization of NetCloud, LLC violated fictitious name regulation in Georgia and that priority only extends to “lawful” prior use. The TTAB held that “unlawful,” as used in the Lanham Act, pertains only to federal law–not state fictitious name regulation.
The TTAB further held that the two marks were identical and, thus, a clear liklihood of confusion existed under the du Pont factors.
TTAB Proceeding: NetCloud, LLC v. East Coast Network Services, LLC, Opposition No. 91210559 against Serial No. 85777557.
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