Wednesday, February 08, 2006

Citable No. 7: Canadian Bests Dane in Use-less TTAB Priority Duel

Two non-US non-users of the mark JACK & JONES for clothing squared off in a summary judgment priority contest before the TTAB, with the Canadian applicant besting the Danish opposer. Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436 (January 30, 2006).

Applicant Fame Jeans, Inc. filed the opposed ITU application on January 9, 2004. It has not used the JACK & JONES mark in the United States. Opposer filed a Section 44(e) application on December 6, 2004, based upon its ownership of a 1990 Danish registration. Opposer admitted that it has never used the mark in the United States.

Opposer argued that it has rights superior to Applicant's because Opposer is not required to make use of its mark in the United States as a condition of registration; thus its mark is currently eligible for registration while Applicant's is not. Furthermore, Opposer contended that its priority should be recognized "in the interest of justice" because Opposer first registered the mark in Denmark in 1990, has made extensive sales of clothing under the mark, intends to use the mark in the United States, and is indeed ready to do so.

The Board was unmoved by Opposer's arguments. Applicant Fame Jeans is entitled to rely on its fling date as its constructive first use date for purposes of this priority contest. Opposer's earliest date for purposes of priority is its US filing date; its foreign use of the mark is irrelevant. [The Board noted that Opposer did not claim that its mark is "famous under Paris Convention Art. 6bis(1)"].

Opposer failed to cite any authority for the proposition that its Section 44(e) application gives it priority vis-a-vis an earlier filed ITU application, nor for the proposition that its foreign use of the JACK & JONES mark "should be recognized in the interests of justice."

The Board therefore granted Applicant's summary judgment motion.

TTABlog comment: Trademark Rule 2.129 (d) provides: "When a party to an inter partes proceeding before the Trademark Trial and Appeal Board cannot prevail without establishing constructive use pursuant to Section 7(c) of the Act in an application under Section 1(b) of the Act, the Trademark Trial and Appeal Board will enter a judgment in favor of that party, subject to the party's establishment of constructive use."

Was the Board correct in dismissing this case? Or should it have held judgment in abeyance pending Applicant's proof of use of its mark? After all, Applicant's purported constructive use date comes to life only after the mark is registered. Maybe the Board should have dismissed without prejudice and then ordered the PTO to suspend the Dane's application pending registration of the Canadian's application. Would the Board's dismissal ruling then have res judicata effect? Please discuss among yourselves.

TTABlog Postcript: Be sure to check out Opposer's website. Very cool!

Text Copyright John L. Welch 2006.


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