TTAB Decides Priority Dispute in ZORLAC Skateboard Clash

IP Ownership guru Pamela Chestek reports here at her Property, Intangible blog on the TTAB's decision in Newton v. Brown, Opposition No. 91174441 (February 7, 2011) [not precedential]. The case boiled down to a priority dispute over the mark ZORLAC for skateboards and apparel. Says Pamela, "This case just stinks. I can't say it's wrongly decided, it just seems so unfair."


Pamela summarizes: "Newton opposed Brown's application and the only question was priority. If Brown had abandoned the mark then Newton had priority, since his actual use preceded the intent-to-use application filing date. If the mark was not abandoned then Brown owned it, based on Newton's transfer to him of the mark and its continuous use thereafter. There is little documentary evidence in the case; instead, the Board had to rely on conflicting testimony of adverse parties and biased witnesses to reach its conclusion."

Before reaching its decision on priority, the Board dealt with several evidentiary objections. It ruled that its decision in Safer, Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010) [TTABlogged here], which changed Board practice by allowing Internet webpages to be submitted into evidence via a notice of reliance, applies retroactively to cases already pending when the decision came down. It also overruled Applicant’s objection that he could not locate a certain webpage because the objection was first raised in his final brief, well after the time when opposer could have offered evidence in response to the objection. The Board observed that "[i]t would be easy for a defendant to dispose of unfavorable Internet evidence by alleging in its final filing that it could not locate a webpage."

Text Copyright John L. Welch.