Friday, March 10, 2023

Precedential No. 10: TTAB Confirms that Once Opposer's Mark is Registered, Priority is No Longer an Issue

After the Board sustained Nnenna Lovette Nkanginieme's Section 2(d) opposition to registration of the mark LOVETTE for handbags, Applicant Lovette Appleton requested reconsideration, contending that the Board improperly found that, because opposer obtained a registration for her pleaded mark and entered same into the record, priority was not at issue. The Board denied the reconsideration request, pointing out that, absent a petition for cancellation of the "pleaded and proven registration," priority is not an issue in a Section 2(d) dispute. Nnenna Lovette Nkanginieme v. Lovette Appleton, 2023 U.S.P.Q.2d 277, (T.T.A.B. 2023) [precedential] (Opinion by Judge Frances S. Wolfson).

Opposer filed her underlying application after Applicant Appleton had filed the application here opposed. Appleton contended it was error to allow Opposer "to rely solely on a registration with a constructive priority date that postdates Applicant's application by five months." In response, Opposer pointed to Rule 2.106(b)(3)(ii), which states that "[a]n attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration." Appleton denied that she was making a "collateral attack," but rather that the registration should not be considered evidence of priority.

The Board pointed out that it did not make a determination of priority because Opposer's registration had removed priority as an issue. In short, the Board must consider existing registrations without regard to prior use, absent a petition for cancellation of the registration. See, e.g., Signal Cos. v. Sigmor Corp., 190 USPQ 81, 83 (TTAB 1975) (Opposer's registration issued after Applicant's first use date).

Long-standing precedent makes clear that Trademark Act Section 2(d) provides two separate bases for refusal, one being a mark registered in the USPTO and the other being a mark (or trade name) previously used in the United States and not abandoned, and that the requirement of priority of use applies only to unregistered marks asserted as a bar to registration. House Beer, 114 USPQ2d at 1076, n.14; Signal Cos., 190 USPQ at 83.

The Board pointed out that Applicant Appleton could have made priority an issue by opposing the underlying application when it was published, or by petitioning to cancel the issued registration, claiming priority. Appleton would not thereby give up her defense of no likelihood of confusion because she could have alternatively pleaded priority on the one hand, and no likelihood of confusion on the other.

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TTABlogger comment: Can the applicant rectify the situation here by seeking review in the district court under Section 1071? Can she include a claim for cancellation in her complaint?

Text Copyright John L. Welch 2023.


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