Rolex Fails to Plead or Prove Priority Based on Analogous TM Use: TTAB Dismisses Opposition to "SOME WATCHES TELL TIME ... SOME TELL A STORY"

The Board dismissed this opposition to registration of the mark SOME WATCHES TELL TIME ... SOME TELL A STORY for, inter alia, watches. Opposer Rolex alleged likelihood of confusion with its purported common law mark IT DOESN’T JUST TELL TIME. IT TELLS HISTORY for watches, but Rolex's claim of priority based on use analogous to trademark use failed because (1) it wasn't properly pleaded or tried by consent, and (2) Rolex failed to prove prior analogous use as a source identifier. Rolex Watch U.S.A., Inc. v. Montres Jaquet Droz SA, Opposition No. 91242189 (December 7, 2020) [not precedential] (Opinion by Judge Jonathan Hudis).

Pleading: Rolex conceded that it was not relying on "technical (affixation) trademark use" on watches, nor did it claim trade name use of the HISTORY tagline. Instead it relied on "analogous trademark use." Applicant objected to this claim because it was not asserted in the notice of opposition.

Reviewing the notice of opposition, the Board agreed that Rolex did not plead analogous trademark use. Opposer's allegations "did not provide Applicant with sufficient notice of the basis for Opposer’s claim of priority as argued in Opposer’s Briefs."

The question then became "whether the parties litigated analogous trademark use by express or implied consent under Fed. R. Civ. P. 15(b)." Reviewing Rolex's discovery responses and its trial testimony and exhibits, the Board concluded that Roles did not "place Applicant on notice during discovery or trial that analogous trademark use was being litigated in this Opposition."

Proof: Moreover, even if analogous trademark use had been properly pleaded or tried by consent, Rolex failed to meet its burden of proving that the tagline was used as a source identifier. Rolex "used the HISTORY Tagline in a subsidiary, supportive role in ROLEX watch advertising ROLEX was shown as the mark designating the source of the watches, not the advertising tagline."

“[O]ne may ground one’s opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use. … Such an ‘analogous use’ opposition can succeed, however, only where the analogous use is of such a nature and extent as to create public identification of the target term with the opposer’s product or service.” T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996) (internal citations omitted).

The Board found that Rolex consistently uses the ROLEX mark as source indicator, but it did not prove that its HISTORY Tagline "in and of itself" functioned as an identifier of the source of its goods

Opposer’s HISTORY Tagline advertising uniformly includes a depiction of the ROLEX house mark in bright green lettering. The ROLEX mark is clearly the most eye-catching presentation in each advertisement. No matter the font size or style in which it is presented, the HISTORY Tagline is always shown in a muted gray color. In a good portion of Opposer’s marketing pieces made of record, the font size of the HISTORY Tagline is much smaller than that of either the ROLEX mark or other textual matter on the page.

Finally, the Board noted that there was no evidence that Rolex ever made technical trademark use of the HISTORY tagline during the 6-year period that the slogan has been in use. Thus, absent clear evidence of technical trademark use of the HISTORY Tagline within a commercially reasonable time, Opposer has in any event not perfected its purported analogous trademark use.

And so the Board dismissed the opposition.

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TTABlogger comment: Pretty harsh on Rolex, don't you think? I guess it needed a survey to show consumer recognition. But even so, do you think these two slogans are confusingly similar?

Text Copyright John L. Welch 2020.