What Type of Use Will Qualify for Use Analogous to Trademark Use
Technical trademark use is the type of use required to file a trademark application at the United States Patent & Trademark Office, while use analogous to trademark use can be relied on to prevail in a priority dispute. For more information on technical trademark use, see our web page entitled, Technical Trademark Use v. Use-Analogous-To-Trademark Use & Trade Name Use. This page will focus on recent cases that have set forth the type of use necessary to demonstrate use analogous to trademark use. Analogous use can involve pre-sales activities for goods or advertising and promotion of services prior to rendering the services that can be tacked on to a constructive use date or technical trademark use.
The Court of Appeals for the Federal Circuit has set forth the standard for the sufficiency of analogous use efforts: "[W]hether it was sufficiently clear, widespread, and repetitive to create the required association in the minds of the potential purchasers between the mark as an indicator of a particular source and the [product or] service to become available later". T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996). See, Paul's Repair Shop Inc. v. Coalfield Services, Inc., Opposition No. 91216009 (July 13, 2016) [not precedential], where the Board held that a single purchase order does not support prior and continuous use of the mark. See also, Westrex Corp. v. New Sensor Corp., 83 U.S.P.Q.2d 1215 (TTAB 2007), where the Opposer spent approximately $50,000-$60,000 in advertising and promotion for the brand, received inquiries from potential customers, and received one order for the product (although the order was cancelled soon thereafter) and the Board found that this did not rise to the level of analogous use.
See The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No. 91207409 (October 15, 2013) [not precendential], where Applicant's evidence when viewed as a whole was not sufficient to establish priority before its constructive use date. The Board stated that the identification of the mark could be inferred based on indirect evidence. Examples of use of the mark could include use in brochures, catalogs, newspaper ads or articles in newspapers, trade publications, or Internet websites. Use in advertising must reference the goods or services. Securing a domain name using the mark does not by itself prove use analogous to trademark use.
If there is social media use, there should be evidence in the way of oral testimony or other data that demonstrates the consumer exposure. In Spendology, the Applicant repeatedly did not reference its services when using its trademark. Therefore, Applicant's evidence failed to establish use analogous to trademark use. The Opposer in Spendology presented website print-outs of the mark used on the site with the services. There was oral testimony that the mark was used in substantially the same format in 2010 as it is used now. The Board has held in the past that oral testimony may be sufficient to establish both prior use and continuous, when the testimony is offered by a witness with knowledge of the facts and when the testimony is clear, convincing, and consistent. The Opposer was able to show a use date earlier than its constructive use date and prevailed.
Compare Dyneer Corporation v. Automotive Products, plc, 37 USPQ2d 1251 (TTAB 1995), where the Board held that evidence of presentations to at least 12 customers created a public identification of the mark with the Applicant and potential consumers. Thus, Applicant satisfied the burden of showing use analogous to trademark use. In another more recent case, the Board found that the Opposer successfully demonstrated priority by leasing warehouse space, obtaining insurance for the space, ordering packaging for the goods, beginning the label registration process with the state, taking possession of products it intended to sell, and one sale occurring. See Mt. Eden Organics, Inc. v. Native Nutrients, Opposition NO. 91208923 (June 5, 2015) [not precedential]. In the past, The Federal Circuit Court has emphasized that the pieces of evidence must be viewed as a whole. Whether a particular piece of evidence by itself establishes prior use or analogous use is not dispositive of whether a party establishes prior use or analogous use by a preponderance of the evidence. Priority disputes can be complex, if you have questions concerning priority rights, please contact our office for a courtesy consultation.