[E-trademarks] [EXT] Re: Alleging Priority in Notice of Opposition
Alex Butterman
abutterman at dbllawyers.com
Fri Mar 8 22:39:00 EST 2024
I just got done briefing an opposition in which this was an issue – the opposer’s priority relied solely on their earlier filing date than our client’s filing date. Our client, the applicant, has in fact started using their mark subsequent to Opposer’s filing date but the use has not yet been alleged in the application.
The TTAB recognizes constructive priority as a prior right if that effective filing date precedes the first use or filing date of the defendant. However, that filing date priority is conditioned on the Opposer’s asserted application actually registering and that there has been bona fide intent to use. If that earlier filing date of the Opposer is proven to be earlier than any filing date or use of the defendant, the Opposer will have priority even if the Opposer alleges use after the defendant’s first use and/or alleges use with a first use date later than defendant’s first use date. Isn’t that whole point of the benefit of filing based on ITU? Or am I missing something?
Now, I do not know what happens if Opposer’s application never registers during the opposition proceeding, which is the case in my opposition. My opposition has some very strange facts and we had several good arguments to attack the Opposer’s bona fide intent to use.
Re-reading your fact pattern where you said the Opposer keeps filing SOU extension requests, if you are still at the pleading stage, I think your best defense is to challenge their bona fide intent to use. This priority claim of the Opposer also goes to the Opposer’s standing that they need to prove. If the opposition lasts longer than the Opposer’s final deadline to file their SOU and the Opposer never files their SOU, their whole basis for the opposition and their standing is gone and the opposition should be dismissed.
Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
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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 04:19 PM
To: Kevin Grierson <kgrierson at cm.law>; Roberto Ledesma <rl at everythingtrademarks.com>
Cc: Ramon G. Vela Cordova <rvela at velacordova.com>; Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Subject: [EXT] Re: [E-trademarks] Alleging Priority in Notice of Opposition
The conclusion in Kevin's last paragraph below was the same I reached when thinking about this. Also, maybe the question can be resolved by asking what are the pleadings in an opposition? My understanding is that the pleadings are the notice of opposition and answer, see 37 C.F.R. § 2.116(c) and TBMP 302. So the application's use date is not part of a pleading and is not evidence. Therefore, it isn’t a "date of first use on which defendant can rely”.
Best regards,
Ramón
On Mar 8, 2024, at 4:11 PM, Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>> wrote:
I think you’re conflating the date to be proved and what needs to be plead. The opposer needs to allege use prior to applicant’s first use, but I think at the pleading stage opposer wouldn’t have to allege use prior to a specific date claimed by the applicant, just an allegation of use by opposer and a claim that opposer’s use was earlier than applicant’s actual use date to be proved at trial.
I agree the wording in the TBMP is odd, but it’s hard to conceive that a claimed and unproven DOFU in an application can foreclose an opposition by someone who started use after that unproven date.
Kevin Grierson
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
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From: Roberto Ledesma <rl at everythingtrademarks.com<mailto:rl at everythingtrademarks.com>>
Sent: Friday, March 8, 2024 3:04 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Kevin Grierson <kgrierson at cm.law<mailto:kgrierson at cm.law>>; rvela at velacordova.com<mailto:rvela at velacordova.com>
Subject: Re: [E-trademarks] Alleging Priority in Notice of Opposition
EXTERNAL EMAIL
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<mailto: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
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Ramon G. Vela Cordova <rvela at velacordova.com<mailto: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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RGVC
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