Rendering of Hair Styling Services for Free to 4 Customers Established Priority in BLAST BLOW DRY Opposition
This Section 2(d) opposition boiled down to a question of priority of use. Applicant sought to register the mark BLAST BLOW DRY BAR & Design, shown below, for hair salon services [BLOW DRY DISCLAIMED], but opposer claimed a likelihood of confusion with its allegedly previously-used mark BLAST BLOW DRY for identical services. The Board found that opposer used its mark on December 8, 2011 (a mere two days before applicant's filing date) when it provided hair styling services, free of charge, to four persons attending a jewelry store's holiday party, with opposer’s stylists wearing clothing bearing the name BLAST BLOW DRY and distributing promotional materials during the event. That usage was sufficient to establish priority, and the Board sustained the opposition. Blast Blow Dry Bar LLC v. Blown Away LLC d/b/a Blast Blow Dry Bar, Opposition No. 912047690 (January 4, 2014) [not precedential].
Although in some cases, the rendering of services to only four persons would not constitute "use," the Board took into account "the low cost and limited nature of the parties' hair styling services, and the local nature of the parties’ businesses, which currently operate in single locations." [Opposer in Austin, Texas, and applicant in Minneapolis]. The Board also noted that three weeks later, opposer was paid for services rendered to a larger number of customers at its place of business, and use of the mark continued thereafter.
Applicant also engaged in a promotional event on that same date, December 8, 2011, which event ( a tennis program's holiday party) was attended by some 20 people not affiliated with applicant. During the event applicant demonstrated its "blow out" technique on one of applicant’s co-owners, and applicant's logo was displayed on a hard poster and on various promotional items distributed to attendees. But applicant did not couple its promotional efforts at the event "with the actual rendering of the involved services to potential customers."
That distinction is sufficient, under the facts of this case, for us to find that opposer established actual trademark use on December 8, 2011, while applicant’s purely promotional efforts before a small group of people were insufficient to establish either actual service mark use or use analogous to service mark use, leaving applicant to rely on the subsequent December 10, 2011 filing date of its involved application.
Both parties attempted to rely on use analogous to service mark use in order to establish priority. However, the Board observed, the parties’ "mere registration of their marks as domain names is not enough to establish service mark use or use analogous to service mark use where neither party operated an active website accessible through its domain name." Nor was the mere formation of a limited liability company.
Opposer distributed business cards and promotional materials, but there was no evidence regarding how many customers or potential customers were reached via these efforts. Applicant’s promotional efforts at the tennis program’s small holiday party on December 8th did not reach a sufficient number of people to constitute use analogous to service mark use.
Considered as a whole, the parties’ evidence falls short for the same reason. That is, even where the parties made open use of their names or marks, such as through a banner "on" opposer’s store or through promotional appearances at events, there is simply no evidence that these efforts reached a sufficient number of people, and we therefore cannot determine whether the parties’ efforts had an impact, much less a "substantial impact," on the purchasing public.
Therefore the Board found that neither party had established use analogous to service mark use. Since Opposer did establish actual use of its mark on December 8, 2011, it won the priority contest, and the Board sustained the opposition.
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TTABlog note: Note that "use" of a service mark requires the actual rendering of the services. Advertising and promotion may prove analogous use, provided that it is sufficiently widespread. What if you open a restaurant on day one, with signage out front, but no customer arrives until day two. Is the mark in use on day one? Is there use analogous to service mark use on day one?
Text Copyright John L. Welch 2014.