[E-trademarks] Alleging Priority in Notice of Opposition

[Kevin Grierson]

Right.  I don’t have case law for it, but I have to think that the only date that the Opposer would have to plead behind is the filing date, because filing gives presumptive priority as of that date.  Any other DOFU claimed by applicant would be subject to proof of use.


Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Ramon G. Vela Cordova via E-trademarks
Sent: Friday, March 8, 2024 11:35 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Ramon G. Vela Cordova <rvela at velacordova.com>
Subject: Re: [E-trademarks] Alleging Priority in Notice of Opposition

EXTERNAL EMAIL
Hi Robert,

I don't know the answer, but would ask whether applicant can in fact rely on the use date stated in its application for purposes of a motion to dismiss. They certainly cannot rely on that statement as evidence of use.

Best regards,
Ramón


On Mar 7, 2024, at 4:27 PM, Roberto Ledesma via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Hi All -- I think I know the answer to this, but it isn't entirely clear to me.  Here's the question:

Is priority properly alleged when the Opposer is relying on the filing date of an earlier pending application (not registered yet -- extensions have been filed for the Statement of Use) against an Applicant's later-filed application but one that includes an Allegation of Use with a date of first use that pre-dates the filing date of Opposer's prior pending application?

Based on the pending filings at issue, the Applicant claims priority of use. Opposer's allegations in its Notice of Opposition completely ignore this fact and only mention the parties' application filing dates.

TBMP section 309.03(c)(2) A. reads:

"A plaintiff must plead (and later prove) priority of use. In order to properly assert priority, a plaintiff must allege facts showing proprietary rights in its pleaded mark that are prior to defendant’s rights in the challenged mark. Such rights may be shown by, for example, ownership of an application with a filing date (or a registration with an underlying application filing date) prior to any date of first use on which defendant can rely, prior trademark or service mark use, or prior use analogous to trademark or service mark use." Emphasis added.

The earlier date of first use in the Allegation of Use in the Opposed Application is clearly a prior date on which the defendant/Applicant can rely.  So it seems the Opposer has failed to properly allege priority to support a likelihood of confusion claim and the Opposition should be dismissed.  Am I missing something here?

Any thoughts/comments are appreciated.

Thanks,
Roberto Ledesma
EverythingTrademarks.com<http://everythingtrademarks.com/>
Linkedin.com/in/RobertoLedesma<http://linkedin.com/in/robertoledesma>
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Best regards,
RGVC


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