Wednesday, January 29, 2014

Precedential No. 2: In Concurrent Use Ruling, TTAB Okays Nationwide Registration Even Though Services Never Performed in NYC or CT

In a rare, contested, concurrent use proceeding, the Board ruled that Defendant Trilobite, Ltd. was entitled to an unrestricted federal registration for its mark TRILOBITE for audio and video recording and production services. The concurrent use application of Peter Turdin, Jr., seeking registration of the mark TRILOBITE PICTURES for "motion picture film production, and animation services," and restricted to New York City and Connecticut, was refused because Turdin was unable to establish that there was no likelihood of confusion if the involved marks were concurrently used in these two areas. Turdin, Jr. v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014) [precedential].


Turdin filed his application on April 4, 2009, less than a month after Trilobite's filing date. Turdin's application was suspended in view of a likelihood of confusion with Trilobite's mark. When Trilobite's applications were published, Turdin opposed on the ground of likely confusion with his mark. He then amended his application to one seeking a concurrent use registration. The Board consolidated the two oppositions and, after Turdin's application had survived publication without opposition, the Board granted Turdin's motion to convert the oppositions to a concurrent use proceeding. See TBMP Section 1113.01.

To establish his right to a concurrent use registration for Connecticut and New York City, Turdin had the burden to show that (1) he made lawful concurrent use of TRILOBITE in commerce prior to the filing date of Trilobite Ltd.s application, and (2) that confusion, mistake, or deception is not likely to result from his continued use of TRILOBITE PICTURES in the areas in which he currently uses his mark.

The evidence confirmed that Turdin began using his mark (in Connecticut) prior to Trilobite Ltd.'s filing date, and there was no evidence that his adoption of the mark was not in good faith or that he had knowledge of Trilobite's prior use of TRILOBITE. Thus Turdin satisfied the first element of the test.

A central question was whether both parties are using their marks in the same territories. If the trading territories overlap, that precludes the granting of concurrent use registrations.

Turdin established that he used his mark in Connecticut (his home state) and New York City. Trilobite Ltd. (apparently headquartered in Ohio) maintained that it works with companies that produce content for cable television shows, and has "a lot" of clients "in" New York City. Turdin argued that Trilobite's activities did not constitute use of the mark in New York City because its services are not performed there. Some of Trilobite's invoices were addressed to business in New York City, but they were not for services actually performed there.

Citing First Niagara [TTABlogged here] the Board pointed out that Trilobite's services "need not be actually performed in New York City to find, for our purposes, that it has used TRILOBITE in New York City."

[W]e find that Trilobite has used and continues to use its mark in New York City by virtue of its correspondence, contracts, billing and interaction with clients in New York City, and that it used its mark in New York City prior to Turdin’s use of his mark in New York City.

Turning to Connecticut, the evidence was insufficient to establish that Trilobite used its mark in Connecticut. Trilobite, in turn, asserted that Turdin was using his mark in other locations as well, where there is a likelihood of confusion with its mark. The Board, however, found Turdin's use outside of New York City and Connecticut to be de minimis.

The Board next considered whether there exists a likelihood of confusion from the parties use of their respective marks in New York City. Applying the duPont factors, the Board not surprisingly found the services overlapping in part (animated videos) and otherwise related, and the channels of trade and classes of customers to be the same. Turdin disclaimed the word PICTURES in his mark, and so the dominant portion of his mark is identical to the Trilobite's mark.

The Board therefore found that confusion is likely between the two marks when used in New York City.

What about Connecticut? Is Connecticut "sufficiently distinct geographically that confusion would not arise"? The Board applied the Weiner King factors to Trilobite's use of its mark: (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; and (4) presently planned expansion.

There was no evidence that Trilobite Ltd. had any previous business activity in Connecticut, and no evidence of any significant business in states contiguous to Connecticut (other than in New York City). However, its president testified that there is "quite an overlap of people who live in the Connecticut area and work in New York, so I find that sometimes I don't know if they're in Connecticut actually or in New York."

Turdin had the burden to show a lack of confusion under concurrent use of the marks. He failed to persuade the Board that confusion is not likely "if Turdin is granted Connecticut as part of his concurrent use territory."

Therefore the Board ruled that Turdin's concurrent use application must be refused, and that Trilobite Ltd. is entitled to unrestricted registrations for the entire United States.

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TTABlog note:  How would Turdin prove the negative: that confusion was not likely in Connecticut? Trilobite Ltd. was awarded NYC even though it never performed services there, and it won Connecticut even though it never even sent any bills or correspondence there. Although Turdin may have had the ultimate burden of proof, shouldn't Trilobite at least have the burden of coming forward with prima facie evidence showing a likelihood of confusion in Connecticut? Was the self-serving and rather vague testimony of its president enough for a prima facie case? How about some concrete proof that someone in actually in Connecticut actually heard of Trilobite Ltd.?

Text Copyright John L. Welch 2014.

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