Thursday, October 30, 2014

TTAB Dismisses AGENTLINK 2(d) Opposition: No Priority and No Fraud

Section 2(d) decisions are a dime-a-dozen at the TTAB, but here's one that at least includes some interesting issues. Lighthouse opposed an application to register the mark AGENTLINK for certain insurance agency and brokerage services, claiming a likelihood of confusion with its allegedly previously-used mark AGENT LINK for marketing, advertising and consulting services in the insurance industry. Opposer Lighthouse also claimed fraud in the filing of the opposed application. Both claims failed. Lighthouse Sales and Marketing, LLC, v. MedLink, Incorporated, Opposition No. 91200752 (October 21, 2014).

Priority: Applicant MedLink sought to tack on to to its use of the AGENTLINK mark, its earlier use of the mark "MedLink." Of course that didn't fly, because tacking requires that the two marks be "legal equivalents." And so applicant was stuck with its fling date of October 21, 2010 as its priority date.

Opposer Lighthouse, on the other hand, failed to establish technical trademark use of its AGENT LINK mark prior to applicant's filing date. Lighthouse first rendered its services no earlier than October 25, 2010, when it executed a contract for the sale of its services to a single customer. In fact, there was no evidence as to when the services were actually performed, but in any case this lone "sale" occurred after applicant's filing date.

Lighthouse, however, asserted that it had earlier use analogous to trademark use. To establish same, it had to prove that its prior use of AGENT LINK was sufficient to create an association in the minds of consumers between its mark and its services. A direct association need not be shown, but opposer had so show that its activities were "reasonably expected to have a substantial impact on the purchasing public" in order to acquire proprietary rights in the mark.

Here, Lighthouse's evidence was insufficient. It acquisition of a fictitious name certificate, a domain name, and a toll-free number, and its contract with an IT firm regarding the sending of emails were activities in the nature of setting up a business. No potential customers were exposed to opposer's mark. Although opposer's website was up and running by April 2010, there was no evicence as to the impact of the use of AGENT LINK on the website: i.e., there was no evidence that anyone actually visited the website. Nor was there any evidence of the effect of Opposer's email campaigns. Opposer had email exchanges with 15 potential customers, too few to "translate into public exposure of AGENT LINK with Opposer."

The Board concluded that these efforts were insufficient to establish use analogous to trademark use. Since opposer had the burden of proof with respect to its claim of priority and likelihood of confusion, its Section 2(d) claim failed.

Fraud: Opposer's fraud claim hinged on the contention that applicant's CEO had actual knowledge of opposer's prior use of the AGENT LINK mark. Therefore, when the CEO signed the application to register, he could not have believed that applicant was entitled to use the AGENTLINK mark and that no other person had the right to use AGENTLINK or a similar variation thereof.

The Board, however, found that the record evidence did not support opposer's claim. Applicant's CEO testified that he had no knowledge of opposer at the time the application was filed, and there was no reason to doubt his testimony. Opposer's assertion that it mailed promotional material to applicant prior to the filing date did not establish that the CEO received and reviewed the material.

Given that fraud must be proven to the hilt, we find that even if Opposer had shown that Applicant had received the solicitation letter and/or email prior to Applicant's executing the application declaration, receipt alone does not prove that Applicant knew that Opposer had any rights, much less, superior rights in the AGENT LINK mark, or that Applicant believed that its use of its mark would be likely to cause confusion. Moreover, the parties’ services are not substantially identical and, therefore, Applicant's belief that there was no likelihood of confusion resulting from the parties’ concurrent use of their respective marks in connection with their respective services was not unreasonable. Quite simply, Opposer's evidence falls far short of meeting the standard of proof for fraud, and its ground that Applicant committed fraud in executing the application declaration is therefore dismissed.

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TTABlog note: A clearly bogus fraud claim. For a successful fraud claim, the rarest of birds, see last month's Nationstar case TTABlogged here].

Text Copyright John L. Welch 2014.


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