Monday, November 12, 2018

TTAB Awards Junior User USA Minus Oregon in GREENFIELD Concurrent Use Proceeding

In this concurrent use proceeding, the Board ordered restriction of a registration for the mark GREENFIELD for various healthcare services, to the state of Oregon. Applicant successfully sought concurrent use registrations for the marks GREENFIELD ASSISTED LIVING and GREENFIELD SENIOR LIVING for assisted living facilities in the remainder of the United States. Greenfield Senior Living, Inc. v. Greenfield Health System, LLC, Concurrent Use Proceeding No. 94002722 (November 7, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant began use of its marks in 2002 and 2005, more than seven years before registrant filed its application to register, but after Registrant's alleged first use date. It has expanded to five states, expended more than $100 million in expansion efforts, and spent hundreds of thousands of dollars on advertising and marketing.

Registrant's services are offered at two locations in Portland, Oregon. Applicant's uncontroverted testimony indicated that it adopted its marks in good faith without knowledge of registrant or its mark.

The question, then was what are the "registrable rights" of the parties as to the parts of the United States in which they have not used their respective marks?

The senior user is prima facie entitled to a registration covering the entire United States. "Such a prior user, who applies for a registration before registration is granted to another party, is entitled to a registration having nationwide effect no less than if there were no concurrent user having registrable rights." Those rights should be limited "only to the extent that any other subsequent user, who can establish the existence of rights earlier than the prior user's application for registration, can also prove a likelihood of confusion, mistake, or deception." In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970)). However, this presumption in favor of the senior user can be overcome.

The Board first considered the likelihood of confusion issue, and concluded that confusion would not be likely if an appropriate geographic restriction were imposed. The lack of actual confusion over the 15 years of coexistence was relevant to this determination. Moreover, it is not necessary that all possible confusion be eliminated. And the fact that both parties' services are advertised online is not enough to result in a likelihood of confusion, particularly since there was no evidence that registrant has expanded beyond two locations in Oregon or that it enjoys a reputation beyond Oregon.

The next issue was the appropriate geographic restriction. Actual use in an area is not necessary to establish rights there. The inquiry should focus on a number of factors, including the party's past business activity, previous expansion (or lack thereof), and planned expansion. Applying those criteria, the Board found that "the general policy of favoring the first to register is inapplicable and that all other relevant factors favor Applicant. Indeed, Applicant, as the prior user [in its territory], would likely prevail, on the facts present herein, in a petition to cancel the registered mark [actually, the registration, not the mark - ed.], had such a course of action been taken."

Registrant (appearing pro se), did not present any evidence as to its promotional efforts or expansion plans. The Board found that registrant, through inaction over a considerable time period, has abandoned its right to expand use of its mark beyond its trading area. It therefore cannot preclude applicant from "filling the territorial void left by Registrant."

The Board concluded that "the purpose of the statute is best served by granting Applicant registrations for the entire United States except for Registrant's trading area, i.e., the state of Oregon."

Read comments and post your comment here.

TTABlog comment: In concurrent use proceedings involving service marks, Internet usage doesn't seem to matter much since the services are typically rendered locally. What about Software as a Service?

Text Copyright John L. Welch 2018.


At 2:42 PM, Anonymous Anonymous said...

Vancouver, Washington is a not-small city immediately across the river from Portland, Oregon where the registrant is.

It's certainly part of the Portland metro area in the same sense that parts of PA and DE are part of the Philly metro area.

The TTAB did not consider this (probably b/c it's not aware of this), and by going pro se and not submitting any evidence, registrant ended up w/ Oregon as the geog restriction.

This overstates and understates the likely situation. First, it's likely Vancouver, WA should have been included in registrant's territory. Also, Oregon is huge, and it's very unlikely registrant has use or reputation is the overwhelming majority of the state.

At 5:26 PM, Blogger Jonathan Hudis said...

Considering that concurrent use decisions from the TTAB are so rare, I do not understand why this decision was not published as precedent.

At 1:38 PM, Anonymous Anonymous said...

They spent $100 million and forgot about the trademark?


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