"COLLEGETOWN" Opposer Flunks TTAB Priority Test
Opposer Collegetown Relocation, LLC, a provider of educational and real estate information services, and purported purveyor of clothing, failed to block registration of the mark COLLEGETOWN for various clothing items. Collegetown Relocation, LLC v. Garan Services Corp., Opposition No. 91122058 (December 29, 2004) [not citable]. With regard to its own items of COLLEGETOWN brand clothing, Opposer was unable to beat Applicant Garan's constructive first use date of August 31, 1998, the filing date of Garan's ITU application. As to Opposer's services, the Board was not persuaded that confusion would be likely vis-vis Garan's goods.
Opposer claimed that it first used the mark COLLEGETOWN for hats and t-shirts on August 12, 1998. The Board pointed out that Collegetown could establish its prior rights either through "technical trademark use" -- i.e., use in commerce as contemplated by Sections 2(d) and 45 of the Trademark Act -- or by use "analogous to trademark use" -- e.g., use in advertising or any other manner of public use that creates an association of the mark with the goods.
Opposer proved a single shipment of a hat and a t-shirt embroidered with "COLLEGETOWN" from Princeton, New Jersey to a woman in Pennsylvania who was a personal friend and a member of Opposer's advisory board. She was asked for her "artistic comments because we will be doing greater production someday and we want to get it right." On August 24, she responded with her observations regarding the font used for the mark.
The Board found this to be "a token, albeit interstate, shipment that was done merely to reserve a right to use the mark on clothing at some future time." The recipient was not an actual or potential customer, but an advisor. Moreover, this transaction was not followed with "any genuine effort or intent to engage in commercial use." During the next two and one half years, Opposer did not sell or distribute any clothing, nor did it have a formal business or marketing plan. The Board concluded that Opposer's activities constituted neither technical trademark use, nor use analogous to trademark use.
Turning to Opposer's services, there was no issue of priority because Opposer owned registrations for the marks COLLEGETOWN and COLLEGETOWN RELOCATION. However, the Board found confusion unlikely because the word "Collegetown" is suggestive of Opposer's services, because Opposer's marks have had minimal public exposure and are thus not entitled to broad protection, and because Opposer failed to show that its services and Applicant's clothing items are related.
". . . opposer has not competed in applicant's intended market. Nor has opposer presented any evidence that it intends to do so. Moreover, . . . there is no persuasive evidence of any genuine intent by opposer to expand into the clothing field."According to Opposer's website, it remains "hopeful that our products will be available for purchase in early 2005, pending the outcome of a lingering trademark related issue." Right now, prospects are not looking too good for Opposer's clothing line.