Tuesday, February 01, 2005

Minnesotans Survive Toothless Texan TTAB Priority Challenge Re "NEXT STAGE" Mark

Hopkins, Minnesota-based Stages Theatre Company survived a feeble Section 2(d) opposition to its registration of the mark NEXT STAGE for "entertainment in the nature of theater production in the fields of dramatic arts, music, literature, and dance." Nextstage Entertainment Corp. v. Stages Theatre Co., Opposition No. 91121402 (January 11, 2005) [not citable]. Priority was the crucial issue, and each party stumbled in its attempt to finish first.
Stages Theatre Company

Opposer Nextstage Entertainment, based in Grand Prairie, Texas, relied on common law rights in the mark NEXTSTAGE, claiming use of that mark since January 1998 in connection with the promotion of live musical events. Applicant claimed a first use date of May 11, 1998 in its application, but filed a motion to amend its first use dates to April 15 (anywhere) and June 15, 1997 (in commerce).

Applicant took no testimony, submitted no evidence, and did not file a brief. Its motion to amend its dates of use was denied by the Board because its affidavit evidence failed to meet the applicable standard: to establish a date earlier than that alleged in an application, an applicant's proof "must be clear and convincing and must not be characterized by contradiction, inconsistencies and indefiniteness." Applicant submitted a 1997-1998 season schedule and a printer's invoice for the schedule, but no proof that the performances actually occurred. This failed to satisfy the definition of service mark use set out in Section 45 of the Trademark Act, which requires that a mark be "used or displayed in the sale or advertising of services" and that the services "be rendered in commerce . . . ." Applicant submitted no other "convincing evidence of use," and therefore the earliest date on which it could rely was its filing date of July 31, 1998.

Nextstage Entertainment Corp.

Opposer took no testimony, but submitted a notice of reliance introducing a number of purported "publications" to prove its first use date. However, the "publications" consisted of, inter alia, an employee name tag, a schedule of costs for promotion, a client/contact list, an information sheet, and various brochures, newsletters, and performance schedules." The Board ruled that none of these documents was admissible by way of notice of reliance: "They do not qualify as either printed publication, such as books and periodicals, available to the public, or as official records, as contemplated by Rule 2.122(e)." Accordingly, these materials were given no consideration.

Thus, not only did Opposer fail to prove priority, but it "failed to properly introduce any evidence that its mark NEXTSTAGE was used at all, let alone used prior to the filing date of applicant's application." Opposer therefore could not prevail on its claim of likelihood of confusion, and the opposition was dismissed.


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