TTAB Dismisses MANDALAEVERYWEAR Opposition; Opposer Proved Prior Advertisement But Not Prior Rendering of Services

Opposer James Barnard claimed prior use of the mark MANDALA for business consulting and branding services, and alleged likelihood of confusion with the Applicant's proposed mark MANDALAEVERYWEAR for marketing consulting services. However, Barnard's proofs showed only that he advertised his services but not that he rendered the services. The was fatal to his priority claim and so the Board dismissed the opposition. James Barnard v. Mandala Wear, LLC, Opposition No. 91252489 (June 16, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson).

In order to establish a claim under Section 2(d), an opposer must prove both priority of use and likelihood of confusion. Here Opposer Barnard relied on his alleged common law service mark rights, claiming that he had used the mark prior to applicant's filing date (its constructive first use date) of March 26, 2019.

Section 45 of the Trademark Act states, in pertinent part, that a service mark is in use in commerce when "it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

Opposer Barnard claimed that he started using the MANDALA mark in 2019. He submitted webpages that he testified were "displayed in 2018," as well as a "proposal" presented to prospective customers in October 2018. The Board found that, although these documents "support Opposer's advertising his mark" for his services, they "do not prove that Opposer has rendered these services." 

To be considered use in commerce, not only must the mark be used or displayed in the sale or advertising of the services, the services must be actually rendered. Opposer never affirmatively asserted that he has rendered brand concept or brand development services to any customer under the MANDALA mark. Thus, Opposer has not submitted either a statement of facts set forth in detail in an affidavit by a knowledgeable affiant (see Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (internal citation omitted)) or any additional evidence to demonstrate that Opposer ever rendered his identified services in commerce.

Due to Opposer's failure to prove priority of use, the Board dismissed the opposition.

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TTABlogger comment: Opposer did not argue priority based on use "analogous to trademark use." Would that have worked? Would he need to show significant exposure of the mark in terms of website visits and the like?

Text Copyright John L. Welch 2021.