Tuesday, May 15, 2007

Precedential No. 34: Section 2(d) Opposer Fails to Prove Priority as TTAB Rejects Analogous Use Argument

Here at the TTABlog, we give priority to precedential decisions, and here's one that's a precedential decision about priority! [LOL! - ed.] The Board granted summary judgment to Applicant New Sensor Corporation in this Section 2(d) consolidated opposition because Opposer Westrex Corporation failed to prove the requisite priority. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215 (TTAB 2007) [precedential].

Applicant sought to register the marks GOLD LION and GENALEX GOLD LION for "electron tubes, also known as vacuum tubes," but Opposer Westrex claimed prior use of the mark GOLD LION for the same goods.

In order to prevail, Westrex had to beat Applicant's filing dates of November 9, 2004 for GENALEX GOLD LION, and June 28, 2005 for GOLD LION. Westrex did not make its first sale of products bearing the GOLD LION mark until January 3, 2007, and therefore it attempted to prove priority under two alternative theories: (1) analogous trademark use since 1995; and (2) ownership via a 2005 assignment of the mark GOLD LION from a third party.

As to the analogous use argument, Westrex proved $50,000-60,000 in advertising/promotional expenditures since 1995, receipt of a handful of e-mails inquiring as to the release of the GOLD LION product, and receipt of a single order (subsequently cancelled). The Board found these efforts insufficient because they "do not constitute clear, widespread, and repetitive activities sufficient to have established prior analogous trademark use on the part of opposer." Westrex failed to create a genuine issue of material fact "that more than a negligible segment of the marketplace was impacted by its online pre-sale activities." The eleven year delay between the start of its pre-sale activities and its first sale "is not 'commercially reasonable' and indicates that opposer's activities were far too sporadic to rise to the level of analogous use."

The Board pointed to the intent-to-use provisions of the Lanham Act, noting that the purpose of the Trademark Revision Act of 1988 was to eliminate "token use." Opposer Westrex acted "at its peril" when it failed to take advantage of those I-T-U provisions.

Turning to Westrex's claim to ownership based on a third-party assignment, the Board again found the evidence inadequate. Two sales transactions to the same purchaser failed to support a finding of prior and continuous use by the third party, and in turn Westrex cannot rely on that same minimal use to establish priority here.

In sum, the Board found no genuine issue of material fact regarding the issue of priority, and it dismissed the oppositions.

Text Copyright John L. Welch 2007.


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