Thursday, December 06, 2007

Precedential No. 64: TTAB Finds Opposer's 2(d) and Lack of Bona Fide Intent Claims to be Adequately Pled

In a rare precedential interlocutory ruling, the Board denied a Rule 12(b)(6) motion to dismiss Opposer Fair Indigo's amended notice of opposition, finding that Opposer had adequately pleaded a likelihood of confusion claim and a claim that Applicant had no bona fide intent to use the applied-for mark when it filed its ITU application for STYLE CONSCIENCE for jewelry. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536 (TTAB 2007) [precedential].

Likelihood of confusion: Opposer alleged likely confusion based on "both actual use starting September 18, 2006, and analogous use starting January 2006" for the mark STYLE WITH A CONSCIENCE for jewelry. Because the opposed application had a filing date of February 24, 2006, only the "analogous use" by Opposer would provide it with priority.

The Board found that Opposer had sufficiently pleaded its claim. Applicant contended that Opposer must allege the elements required to prove analogous use, and specifically that the use be "sufficiently clear, widespread, and repetitive" and make a "substantial impact on the purchasing public." The Board, however, observed that Applicant was confusing the requirement for pleading with the requirements for proof at trial. Opposer had satisfied the notice pleading requirement with regard to a Section 2(d) claim.

Applicant also argued that, in any case, Opposer cannot rely on analogous use to prove priority when an ITU application is involved because that would contravene the legislative intent of Section 1(b): i.e., the "policy of constructive use to encourage prompt registration of marks." The Board disagreed. The intent to use system was created to "obviate the need for 'token' use." However, use analogous to trademark use is different from "token" use. The Board therefore ruled that "a party may establish priority by use analogous to trademark use regardless of how the adverse party seeks to establish priority."

Lack of bona fide intent: As to Opposer's allegations that Applicant lacked a bona fide intent to use its mark, Applicant submitted a copy of a design patent application as evidence of its bona fide intent. Again, Applicant was off base. The Board pointed out that Opposer is required only to state a valid claim, which it did. "Applicant's arguments and evidence are of no import in considering opposer's [pleading], but are more appropriate on summary judgment or for submission as evidence during its testimony period and for argument as part of its trial brief."

The Board therefore rejected Applicant's motion to dismiss and resumed the proceeding.

Text Copyright John L. Welch 2007.


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