Opposer Proves Priority by Use Analogous to Trademark Use and by Shipment of Two Samples

In a 56-page opinion, the Board sustained this opposition to registration of SNACKEEZ DUO for "Beverageware; Household containers for foods; Thermal insulated containers for food or beverages; Bottles, sold empty for beverages; Cups for beverages; Insulating sleeve holder for beverage cups; Portable beverage and food container holder," finding the mark likely to cause confusion with the common law mark SNACK-DUO for food and drink containers. Although opposer's first sale of goods under its mark occurred after applicant's constructive first use date (December 5, 2014), opposer established priority based both on use analogous to trademark use and on the shipment of two samples to a retailer. Dexas International, Ltd. v. Ideavillage Products Corp., Opposition No. 91225850 (July 24, 2018) [not precedential] (Opinion by Judge David K. Heasley).

Use analogous to trademark use: Even before technical trademark use has commenced, advertising or similar pre-sale activities may establish priority if they create the necessary source association in the mind of consumers. Opposer introduced its SNACK-DUO product in Pet Business magazine (see advertisement below) and at a trade show in July 2014, and followed with two more advertisements in September 2014. Inquiries from potential customers were received and two samples were sent to one potential buyer. The first commercial sale took place in January 2015, too late to establish priority, but did show that technical trademark use occurred "within a commercially reasonable time."

After extensively analyzing the precedents cited by the parties, the Board found that Opposer had established priority by way of use analogous to trademark use:

Opposer's exposure of the SNACK-DUO mark created and cultivated the necessary association of that mark with Opposer's product among more than an insubstantial number of the purchasing public. T.A.B. v. PacTel, 27 USPQ2d at 1883. Protection of that association, otherwise known as goodwill, is consistent with both the language and purpose of the Lanham Act.

Transport of two samples: Two samples were shipped to a retail store called Camping World, one in September 2014 and one in November. Camping World subsequently placed an order and has reordered the product many times. Applicant complained that Camping World did not pay for the sample, but the Board pointed out that Section 45 of the Lanham Act states that use of a trademark occurs when goods bearing the mark are "sold or transported." An actual sale of goods is not required.

Whether the distribution of free samples to prospective purchasers constitutes bona fide use of a mark in the ordinary course of trade is a fact intensive inquiry. Here, Camping World had previously purchased other products from opposer. Its buyer not only initiated the dialogue about the SNACK-DUO product but repeatedly asked for samples by the brand name. After receiving the samples, Camping World ordered the product in the hundreds and has continued to order and sell the product.

[T]he samples served a legitimate commercial purpose, as part and parcel of the process by which Opposer's product would enter the marketplace. We find that this is bona fide use of the mark in the ordinary course of trade, and not merely to reserve a right in the mark.

Tacking: Applicant claimed that it was entitled to priority by tacking on its SNACKEEZ DUO mark to its registered SNACKEEZ mark. The Board, however, found that this defense was not pleaded, and in any case the two marks are not legally equivalent as required for tacking.

Likelihood of confusion: Applicant sent a cease-and-desist letter to opposer when opposer's SNACK-DUO product first came out, but here applicant contended that confusion is not likely. "The irony of this backpedaling is not lost on either party." Based on precedent, the Board deemed this letter to be relevant, but not controlling, on the Section 2(d) issue.

The Board found the marks to be more similar than dissimilar. "[T]he minor middle elements between SNACK and DUO are not so prominent as to diminish the strong similarity engendered by the identical elements that begin and end both marks." These identical elements suggest that same connotation and commercial impression: a container with two sections, one for food, one for something else, like a beverage. The Board noted that applicant came to the same conclusion when it sent its cease-and-desist letter.

As to the involved goods, they perform the same or similar function of holding a snack and a drink in one container. Again, applicant thought the goods were similar when it sent its letter.

The opposed application contains no limitations on channels of trade or classes of consumers, and it must be presumed that they travel in all normal channels to the same consumers. There is no reason to believe that ordinary consumers would exercise any heightened degree of care in their purchasing decisions.

Although opposer's mark is suggestive, it is inherently distinctive, and the evidence showed that the mark is entitled to a moderate degree of strength in the Section 2(d) analysis. The lack of evidence of actual confusion was not probative since the marks had been in contemporaneous use for only a short time, and it was unclear whether they have appeared in proximity to each other.

Conclusion: The Board found confusion likely and it therefore sustained the opposition.


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TTABlog comment: Good discussion of the two prongs of the priority issue. PS: Note how applicant's cease-and-desist letter came back to bite it. Better be sure of your priority before making accusations!

Text Copyright John L. Welch 2018.