Wednesday, February 01, 2006

In Citable No. 5, TTAB Grants Summary Judgment in 2(d) "WIRETRACKS" Cancellation

In its fifth citable decision of 2006, the Board granted, on summary judgment, a petition for cancellation of a registration for the mark WIRETRACKS for "plastic conduit for use in electrical installations and electrical use." The Board found the mark confusingly similar to the mark WIRE TRAK previously used (in word and design form) by Petitioner for electrical conduits. Fram Track Indus., Inc. v. WireTracks, LLC, 77 USPQ2d 2000 (TTAB 2006).

The key issue was priority of use. Petitioner Fram Trak asserted that it first sold its goods in packaging bearing the WIRE TRAK mark in 2002. Respondent WireTracks admitted (by failing to respond to admission requests) that it did not sell its goods until April 7, 2003, and further admitted that it had no documents establishing use of its mark prior to March 2003.

According to the Board, Petitioner established that there "is no genuine issue of fact regarding its priority of use." Its CEO, Albert Santelli, Sr., stated in his declaration that Petitioner first used the WIRE TRAK mark on July 3, 2002. Although the mark did not appear on Petitioner's invoice for that first sale, the CEO averred that the goods "have been packaged in polyethylene bags bearing the WIRE TRAK mark since 2002." The Board found that declaration "internally consistent," "not characterized by uncertainty," "credible," and "persuasive." Moreover, Respondent "has not challenged the veracity or the basis for the testimony of Mr. Santelli."

Respondent lamely argued that it has priority because its mark "was the first to make an impact on the public perception," and that Petitioner's mark "has little or no recognition in the relevant market." However, Respondent did not claim any use of its mark (whether trademark use or use analogous to trademark use) earlier than Petitioner's first use date, and therefore this argument was completely off track.

The Board also found that the marks are substantially similar in sound, appearance, and commercial impression, and the goods overlapping. It therefore granted Petitioner Fram Trak's motion for summary judgment.

Text Copyright John L. Welch 2006.


Post a Comment

<< Home