Federal trademark registration provides a number of advantages (mostly presumptive evidentiary advantages in Court) to the trademark owner, and, because of those advantages, registration is unquestionably recommended. However, the fact that a trademark is registered does not mean that the registrant is in the clear and immune from litigation. Nor does the fact that a potential trademark is unregistered mean it is available for the taking.
In a recent Trademark Trial and Appeal Board (TTAB) opposition proceeding filed by the owner of the trademark AMERICA’S NEXT TOP MODEL, the well-known reality show, one of the issues concerned the opposer’s claim that its trademark was “famous.” A declaration that the mark is famous entitles the mark to a broader scope of legal protection. In support of its allegation, the opposer offered evidence that:
Two trademarks that coexisted, conflict-free, for seventeen years prior to a recent trademark opposition proceeding presented no likelihood of confusion under the du Pont test, according to the Trademark Trial and Appeal Board (TTAB). ProMark Brands, Inc. (“ProMark”) sought to register its trademark, SMART BALANCE, for, among other things, frozen foods. GFA Brands, Inc. (“GFA”) opposed that registration, arguing SMART BALANCE presented a likelihood of confusion with its previously registered trademark, SMART ONES, also for frozen foods.
Analyzing two trademarks under the “du Pont” likelihood of confusion test, the Trademark Trial and Appeal Board (TTAB), in a recent trademark opposition proceeding, held that the dissimilarity of meaning between the two marks is immaterial, where one of the trademarks, though an English word, is not commonly used by the general public. Trademark applicant E. & J. Gallo Winery sought registration of the mark APOTHEOSIS for, among other things, wine. Kinney Family Vintners, LLC opposed the registration, alleging that it had used its trademark APOTHIC on wine prior to the filing of E & J’s intent-to-use application.
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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