Licensee's Prior Common Law Use Established Priority for "SNORE MD" Mark

The Board sustained an opposition to registration of SNORE DOCTOR for "nasal dilators; therapeutic mouthpieces for the prevention of snoring" [DOCTOR disclaimed], finding confusion likely with Opposer James S. Fallon’s common law mark SNORE^MD for a therapeutic mouthguard to be worn over the teeth to reduce the effects of snoring. Opposer Fallon licensed the mark to his company, Apnea Sciences Corporation, and was entitled to rely on the corporation's use of the mark to establish his "standing" and to prove priority. From there, the likelihood of confusion analysis was a bit of a snoozer. James S. Fallon v. Brown Innovation, LLC, Opposition No. 91252488 (October 30, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Board observed that "use of a mark by a licensee pursuant to a controlled licensing agreement is a use which may properly inure to a licensor/owner for purposes of trademark registration, even though the licensor may never have used the mark itself." In re Raven Marine, Inc., 217 USPQ 68, 70 (TTAB 1983), citing  Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). Although Fallon did not submit a written license agreement, an oral license is sufficient. Id. 

Fallon's testimony together with certain documentary evidence established use of the mark in commerce by Apnea since a date prior to Applicant Brown Innovations’s constructive use date, thus establishing Fallon's priority.

The Board's Section 2(d) analysis was straightforward: it found the marks to be similar and used on in-part legally identical goods that travel in overlapping channels of trade to overlapping consumers. 

Brown Innovation pointed out that, although Fallon here argued that "MD" means "medical doctor," Fallon had in a different proceeding argued that the term was an abbreviation for "medical device." The Board noted that "[w]hile not conclusive of consumer perception of the mark, Opposer’s prior statements are facts to be considered in our analysis." 

Even though such a prior statement constitutes an admission and may be considered as evidence, "[u]nder no circumstances may a party’s opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record.” Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). The Board found the argument regarding the meaning as "medical device" to be "unpersuasive," while the "medical doctor" abbreviation was supported by dictionary evidence and by the nature of the use of Fallon's mark in connection with the goods.

And so, the Board sustained the opposition.

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TTABlogger comment: This opinion was originally marked "precedential," but the Board promptly issued a correction.

Text Copyright John L. Welch 2021.