Wednesday, August 28, 2013

TTAB Dismisses "GREAT SEATS" 2(d) Opposition Due to Failure to Prove Priority

A long-running battle over registration of the mark GREAT SEATS, after generating two precedential TTAB decisions (here and here), may have finally reached an end (at least at the Board). The TTAB dismissed this Section 2(d) opposition, involving identical marks for essentially identical services, because opposer failed to prove priority. Great Seats, Inc. v. Great Seats, Ltd., Opposition No. 91189540 (August 12, 2013) [not precedential].

Opposer attempted an end-run around the Board's earlier order refusing to allow opposer to take the testimony of 26 belatedly-identified witnesses, by submitting 23 written statements during its rebuttal case. The Board found the statements to be barred due to the earlier order, and also inadmissible as improper rebuttal.

On the key issue of priority, opposer relied on common law use of GREAT SEATS, as well as use analogous to trademark use. The Board deemed the mark GREAT SEATS to be merely descriptive (i.e., not inherently distinctive) of the parties' ticketing services, and so opposer had to show when the mark acquired distinctiveness as a source indicator for its services. Opposer established use as a service mark as of 1995, but attempted to show prior use analogous to trademark use, claiming that "Great Seats" was the nickname of its Danny Matta, the founding principle of opposer. However, there was no documentation showing use of GREAT SEATS prior to 1995, nor was there evidence that "a clear or widespread association exists between 'Great Seats' and opposer or Mr. Matta in the minds of the purchasing or potential purchasing public prior to opposer's first use of GREAT SEATS as a trademark in 1995." As to the nickname, the evidence was insufficient to show that there was anything more than a "de minimis public association of the term with the services offered by Mr. Matta."

Applicant submitted testimony and evidence (including 36 form statements from customers) showing first use on August 1, 1992, and acquired distinctiveness as early as 1993 or 1994.

Because opposer failed to prove priority, the Board dismissed the Section 2(d) claim.

Opposer also argued that during prosecution of its application, applicant made an insufficient showing under Section 2(f) to warrant approval of the application for publication. The Board pointed out, however, that these allegations address an ex parte examination issue that is not a proper ground for relief in an inter partes proceeding. "It would be manifestly unfair to penalize applicant for non-compliance with a requirement that was never made by an Examining Attorney."

In any event, applicant submitted evidence of acquired distinctiveness in this proceeding and opposer did not challenge its sufficiency.

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Text Copyright John L. Welch 2013.


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