TTAB Dismisses CAKE DIVAS Opposition as Applicant Proves Priority Via Analogous Trademark Use

Opposer lost this TTAB 2(d) food fight when it lost the priority battle. It claimed that Applicant's mark CAKEDIVA for "greeting cards featuring photographs of cakes and cookies" and for "cakes ... and edible decorations made of sugar for cakes and cookies," would likely cause confusion with the mark CAKE DIVAS for "custom cake making, baking, designing and decorating services for edible and faux cakes"]. The Board also threw out Opposer's fraud claim because Opposer never pleaded fraud and raised the issue for the first time in its final brief. Cake Divas v. Charmaine V. Jones, Opposition No. 91173301 (February 23, 2010) [not precedential].


Evidence: The Board first dealt with several evidentiary issues, sustaining Opposer's objection to Applicant's testimony describing her website under the best evidence rule (FRE Section 1002), but it denied Opposer's similar objection to testimony about Applicant's business card because Opposer itself elicited the testimony on cross-examination.

Priority: The only issued litigated by the parties was priority. Opposer established a first use date of October 15, 1998. Determining Applicant's first use date, however, was "more complex" because Applicant did not provide evidence of any technical trademark use prior to October 15, 1998. Instead she had to rely on use analogous to trademark use.

Opposer argued that analogous use may be relied upon for priority only by an opposer seeking to prevent someone from registering a mark, but the case law indicated otherwise. The Board pointed out that, while technical trademark use is required to support an application to register, a party may prove priority through use analogous to trademark use. In other words, analogous use may be tacked onto technical trademark use to prove priority. [Query: may analogous use be tacked on to the constructive first use date of an intent-to-use application? ed.]

Applicant provided magazine articles and advertisements dating back to 1993, a website link in 1996, and evidence of a television appearance in 1993. The Board found that enough to establish use "in a manner analogous to trademark and service mark use as of 1993."

Applicant made bona fide commercial use of the mark through her advertising. Her use of the mark CAKE DIVA created a public identification for her mark and her goods as demonstrated by Ashbell McElveen displaying the cornucopia cake on the 1993 Thanksgiving show for the Sunday Morning Weekend Today Show and this public identification continued with the news articles referencing the Cake Diva in the Gary Info, Wedding Dresses Magazine, Sugarcraft Magazine, and Black Diaprosa [sic!] Magazine.

Although Applicant's early use was in the two-word form CAKE DIVA, the Board found that term to be legally equivalent to the applied-for mark CAKEDIVA. [That was the icing on the cake - ed.]

And so the Board dismissed the opposition.

TTABlog comment: Use analogous to trademark use is certainly a loosey-goosey concept. How much is enough? When has a "public identification" been established? After one appearance on the Today show?

For a precedential ruling on "analogous" use, based on rather flimsy evidence, see the Stickley decision TTABlogged here.

Text Copyright John L. Welch 2011.