With Amended First Use Date, RESORT WEAR SEASPICE Registration Survives Section 2(d) Attack

The Board denied a petition for cancellation of a registration for the mark shown below, for various clothing items, rejecting Petitioner Paradise Holdings' likelihood of confusion claim because Paradise failed to prove priority. Respondent Neo Nyc asserted dates of first use in its registration as early as January 1, 2018, but by clear and convincing evidence it successfully established a first used date of June 10, 2015. Paradise Holdings, Inc. v. Neo Nyc inc, Cancellation No. 92078182 (July 26, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Under Section 7(e) of the Trademark Act, 15 U.S.C. § 1057(e), a registration may be amended “for good cause.” When a registrant seeks “to prove a date of first use earlier than the date alleged in its application for registration . . .  its proof of that earlier date must be ‘clear and convincing.’” Bass Pro Trademarks, 2008 TTAB LEXIS 16, at *31 (TTAB 2008). This same standard applies whether a party moves to amend its registration or seeks to rely at trial on dates of use earlier than those in the registration.

"The dates of first use in a registration may be used as evidence against the applicant or registrant, that is, as admissions against interest and the like." However, Neo Nyc moved to amend the first use dates and provided an unchallenged explanation of why the stated dates were mistaken. Its witness stated that "he submitted the application without the guidance of an attorney and did not understand 'that we had to be specific to our actual earliest use and what actually constituted 'use’' of a trademark.'"

Paradise did not cross-examine Neo Nyc's witness, nor did it offer any contradictory evidence from Neo Nyc’s third-party manufacturers or customers referred to in the testimony and documentary evidence. Therefore, the Board granted Neo Nyc's motion to amend its first use dates.

. . . Respondent’s testimony and evidence is clear and consistent, uncontradicted, and supports a finding that Respondent started preparations for use of its mark in October 2014 and commenced use of its mark in commerce in connection with clothing on June 10, 2015.

Petitioner Paradise had the burden to prove by a preponderance of the evidence that it had priority in its pleaded mark prior to June 10, 2015. It claimed a first use date of January 1, 2015, for clothing. However, in response to an admission request, Paradise admitted that "SEASPICE was first used in commerce by Petitioner on, or in connection with, clothing on July 12, 2015." This was a binding admission by Paradise that the Board could not ignore.

Even considering that admission as merely a piece of evidence, rather than a binding admission, Paradise's evidence and testimony regarding its first use date was "contradictory and vague." "None of this ambiguous testimony regarding sales prior to June 10, 2015 is supported by any documentation such as sales invoices, sales summaries, pictures, or testimony from customers who purchased clothing items."

And so, the Board denied the petition for cancellation.

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TTABlogger comment: So if you're thinking that first used dates stated in a registration don't matter much, think again.

Text Copyright John L. Welch 2024.