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Arthropod's Limited Local Use Sufficient to Reject Concurrent Use Application: TTAB
Practical Law Legal Update 1-555-9285 (Approx. 4 pages)
Arthropod's Limited Local Use Sufficient to Reject Concurrent Use Application: TTAB
by Practical Law Intellectual Property & Technology
| Published on 31 Jan 2014 • USA (National/Federal) |
In Turdin v. Trilobite, Ltd., the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) denied Peter Turdin Jr.'s application for the concurrent use of the mark TRILOBITE PICTURES for motion picture film production and animation services for Connecticut and New York City in view of Trilobite's TRILOBITE marks for audio and video recording and production services because Turdin did not prove that there was no likelihood of confusion if both Turdin and Trilobite concurrenlty used their marks in that geographic areas.
On January 24, 2014, the USPTO Trademark Trial and Appeal Board (TTAB) issued an opinion in Turdin v Trilobite, Ltd., refusing Turdin's application for the concurrent use of the mark TRILOBITE PICTURES for motion picture film production and animation services for Connecticut and New York City because Turdin did not prove that there was no likelihood of confusion with Trilobite, Ltd.'s TRILOBITE marks for audio and video recording and production services in that geographic area. The TTAB instead determined that Trilobite was entitled to an unrestricted federal registration for its mark (Concurrent Use No. 94002505, (TTAB Jan. 24, 2014)).
Turdin began using the TRILOBITE PICTURES mark in January 2000 in Connecticut while engaged in the production of fictional film and media. In April 2009, Peter Turdin, Jr., filed an application to register the mark TRILOBITE PICTURES for motion picture film production and animation services in International Class 41. Turdin disclaimed exclusive rights to the term PICTURES. The USPTO examining attorney advised Turdin that his mark would be refused registration under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) if two earlier applications filed by Trilobite, Ltd. were registered. Both Trilobite applications were for the mark TRILOBITE for audio recording and production, and video production services and video recording services in International Class 41.
In October 2009, Turdin filed notices of opposition against both of Trilobite's applications on the grounds of likelihood of confusion, non-ownership and non-use of the mark. On June 11, 2010, Turdin amended his April 2009 application to one for concurrent use of the mark in Connecticut and New York City. Several months later his application was suspended pending disposition of his oppositions, which the TTAB subsequently converted to a concurrent use proceeding.
Citing In re Beatrice Foods Co., 429 F.2d 466 (CCPA 1970), the TTAB noted that Turdin must establish entitlement to registration as a concurrent user of the mark TRILOBITE in Connecticut and New York by:
- Demonstrating that he made lawful concurrent use of TRILOBITE in commerce before Trilobite's applications' filing date.
- Establishing that there is no likelihood of confusion, mistake or deception from his continued concurrent use of TRILOBITE.
The TTAB also noted that Turdin, as the concurrent use applicant has the burden of proof to demonstrate his entitlement to a concurrent use registration.
Lawful Concurrent Use
The TTAB determined that Turdin's evidence supported his contention that he began using his mark before March 12, 2009, the date of Trilobite's applications, based on:
- Testimony that Turdin formed TRILOBITE PICTURES in Connecticut in January 2000.
- Lack of evidence that Turdin adopted TRILOBITE PICTURES in bad faith or with knowledge of Trilobite's previous use of the TRILOBITE mark.
The TTAB then determined that:
- Trilobite used its marks in New York City since it sent correspondence and invoices bearing the TRILOBITE mark to businesses in New York City. The TTAB reached this conclusion even though Trilobite did not perform its services in New York City relying on First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867 (Fed. Cir. 2007) and Weiner King, Inc. v. The Weiner King Corp., 615 F.2d 512 (CCPA 1980).
- Trilobite did not establish that it used its mark in Connecticut. Although Connecticut consumers may have seen Trilobite's videos, there was insufficient evidence for the TTAB to conclude that Trilobite used its mark in Connecticut.
- Turdin established that he used his mark in Connecticut and New York City.
- Trilobite did not establish that Turdin had used his mark outside of Connecticut and New York City.
Likelihood of Confusion in the Overlapping Territory
New York City
The TTAB next considered whether there is a likelihood of confusion if both parties continue to use their marks in New York City. In making this determination, the TTAB analyzed the factors set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) and concluded that there was a likelihood of confusion because:
- Turdin's and Trilobite's services overlap in part and are otherwise related.
- There was an overlap in the consumers and channels of trade for these services.
- The marks are highly similar in sound, meaning, appearance and commercial impression.
Connecticut
The TTAB next considered whether Connecticut was sufficiently geographically distinct so that there would not be a likelihood of confusion if Turdin used his mark in that state and Trilobite used its mark in the rest of the country. The TTAB acknowledged Weiner King, Inc., which set out several factors for making this determination, but ultimately concluded that Turdin did not meet his burden to establish that confusion is not likely if it granted him Connecticut as his concurrent use territory.