Monday, September 14, 2009

Canadian Concurrent Use Applicant Gets USA Minus MN, Says TTAB

British Columbia-based Overwaitea marched across the border and grabbed 49 states via its concurrent use application for registration of the mark URBAN FARE for "retail grocery store services." Overwaitea listed Urban Fare, LLC as an exception to its right to exclusive use. Urban Fare, LLC uses the same mark in Minnesota for "soups, chicken and vegetable stocks and broths." Overwaitea Food Group Limited Partnership v. Urban Fare, LLC, Concurrent Use No. 94002254 (September 9, 2009).

The Minnesota company did not answer the order setting forth the rights claimed by Overwaitea, and so the Board entered judgment by default against Urban Fare, LLC and allowed Overwaitea time to prove its entitlement to the registration sought.

Overwaitea's evidence satisfied the "touchstone" requirement for a concurrent use registration: that there is no likelihood that confusion will arise from the concurrent use of the marks in the defined geographical areas.

Overwaitea submitted the declaration of its director of merchandising, stating that it operares two stores (with a third on the way) in Vancouver, British Columbia, and has used the URBAN FARE mark since 2002; that Vancouver is a mere 24 miles from the U.S. border ; that Overwaitea's stores have customers who are U.S. citizens and residents; that its print, tv, and radio advertisements reach the USA, but that Minnesota is not part of the "expected distribution, viewing or listening area for those advertisements."

He also declared that, prior to its Overwaitea's filing date, the Minnesota company had used the mark URBAN FARE in Minnesota, for soups and broths; that Overwaitea is unaware of any sales of those goods outside Minnesota; that Overwaitea has no intention of opening an URBAN FARE grocery store in or near Minnesota; and that Overwaitea is not aware of any actual confusion; and that confusion is not likely.

The Board found that Overwaitea had established a prima facie case that the concurrent use of the involved marks is not likely to cause confusion, and so the Board ruled that Overwaitea is entitled to the requested concurrent registration.

TTABlog comment: I note that one may order gift baskets online at Applicant's website. What impact does the Internet have on the concurrent use issue? The Board addressed that question in CDS, Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572 (TTAB 2006) [precedential].

There, I.C.E.D. argued that there would still be confusion because both parties advertise on the Internet, but the Board rejected that argument: "We do not believe that the creation of the Internet has rendered the concurrent use provision of the Trademark Act moot." "[T]he presence of advertising on the Internet does not automatically preclude concurrent use registration." Noting that CDS includes a disclaimer on its website stating that it does business under its mark only in the seven identified states, the Board ruled that the specific record evidence "does not require us to find that there is a likelihood of confusion."

Text Copyright John L. Welch 2009.


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