Wednesday, November 13, 2013

Finding Applicant's Proof of Analogous Use Inadequate, TTAB Enters Summary Judgment in SPENDOLOGY Opposition

Twitter? Facebook? Domain Name Registration? Not enough to prove priority by way of use analogous to trademark use. So the Board granted opposer PNC's summary judgment motion in this Section 2(d) opposition to registration of the mark SPENDOLOGY for a financial website in view of the identical mark for an online budgeting tool. The parties, via their cross-motions for judgment, essentially agreed that confusion is likely. The only issue was priority. The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No. 91207409 (October 15, 2013) [not precedential].

Applicant enjoyed a constructive first use date of October 25, 2011, the filing date of the opposed application. However, opposer PNC's evidence established a first use date of August 26, 2010. Applicant attempted to prove an earlier date based on alleged "use analogous to trademark use."

In order to demonstrate that use analogous to trademark use has given rise to proprietary rights, a party must show that such prior use was sufficient to create an association in the minds of the purchasing public between the mark and the goods. *** We may infer the fact of identification of the mark with the party on the basis of indirect evidence regarding the party's use of the word or phrase in advertising brochures, catalogs, newspaper ads, articles in newspapers, trade publications and Internet websites which create a public awareness of the designation as a trademark identifying the party as a source. [citations omitted].

Applicant's evidence, taken as a whole, failed to establish proprietary rights before its constructive first use date, which plainly was too late for priority purposes.

Applicant's personal budgeting survey and an undated budget presentation failed to reference the mark SPENDOLOGY. Its registration of the domain name did not itself constitute use analogous to trademark use. As to the SPENDOLOGY website, applicant provided two "beta" pages, neither of which referenced the identified services, and in any case there was no evidence as to how many persons viewed the website.

With regard to social media, the acts of joining Twitter and Facebook did not by themselves establish use analogous to trademark use. Although the evidence included URLs and dates of publication, there was no declaration testimony regarding the extent of consumer exposure to applicant's blog posts, Twitter page, tweets, or Facebook page. Moreover, the Twitter page, Facebook page, and blog postings did not refer to applicant's services.

Applicant's remaining evidence, consisting of emails, a press release, and a conference receipt, likewise did not mention the identified services.

In sum, applicant's indirect evidence failed to establish use analogous to trademark use because it did not "support an inference of identification in the mind of the consuming public." Therefore, the earliest date upon which applicant could rely was its filing date of October 25, 2011.

Relying on the declarations of its product manager, based on his personal knowledge, opposer PNC established its common law rights in the mark SPENDOLOGY from August 26, 2010. PNC therefore had priority and the Board granted its motion for summary judgment.

Read comments and post your comment here.

TTABlog note: Note that oral testimony may be enough to establish priority if it is clear and convincing, and uncontradicted.

For a case in which the proof of use analogous to trademark use was deemed adequate, go here.

Text Copyright John L. Welch 2013.


At 11:14 PM, Anonymous Mitch Stabbe said...

Since 1989, when the intent-to-use provisions of the Lanham Act went into effect, there really has been no reason for courts to continue to apply the "analogous to trademark use" doctrine. If someone wants to establish priority before actually making a sale, they can (and should) file an intent-to-use application.


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