[E-trademarks] Alleging Priority in Notice of Opposition

[Roberto Ledesma]

Kevin and Ramon -- thank you for your comments. My initial impression was
the same, I'm just thrown off by the TBMP section on pleading priority,
which states that the Opposer's filing date for purposes of properly
asserting priority must be prior to any date of first use on which the
defendant/Applicant can rely:

"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."

If the defendant/Applicant asserts a date of first use in the opposed
application that is earlier than the Opposer's filing date, then that is
obviously an earlier date of first use on which the defendant can rely.
None of the cases cited in the TBMP section address this particular fact
pattern, which is surprising to me.

RL

On Fri, Mar 8, 2024 at 2:19 PM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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*
>
> *CULHANE**|*MEADOWS PLLC <http://www.culhanemeadows.com/>
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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> 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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