Dexas International, Ltd. v. Ideavillage Products Corp.

• Decision Date: 24 July 2018
• Docket Number: 91225850
• Court: Trademark Trial and Appeal Board
• Parties: Dexas International, Ltd v. Ideavillage Products Corp.

Dexas International, Ltd v. Ideavillage Products Corp.

No. 91225850

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 24, 2018

This Opinion is not a Precedent of the TTAB

Hearing: May 10, 2018

Daniel V. Thompson of Law Office of Daniel V. Thompson P.C. and Mark A. Richmond for Dexas International, Ltd.

Jason M. Drangel of Epstein Drangel LLP For Ideavillage Products Corp.

Before Kuhlke, Goodman and Heasley, Administrative Trademark Judges.

OPINION

Heasley, Administrative Trademark Judge

Ideavillage Products Corp. ("Applicant") seeks registration on the Principal Register of the mark SNACKEEZ DUO (in standard characters) for "Beverageware; household containers for foods; thermal insulated containers for food or beverages bottles, sold empty for beverages; cups for beverages insulating sleeve holder for beverage cups; portable beverage and food container holder" in International Class 21.^[1]

Dexas International, Ltd. ("Opposer") has opposed registration of the applied-for mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the basis of priority and likelihood of confusion with its common law mark SNACK-DUO as used on food and drink containers.^[2] In its Answer, Applicant denied the salient allegations of the Notice of Opposition, as amended.^[3] The parties fully briefed the issues and appeared for oral argument.

I. The Evidentiary Record

The record consists of:

• The pleadings;

• The file of Application Serial No. 86472355 under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b);

• Opposer's first notice of reliance, containing

• excerpts from the trade publications Pet Business (July and September 2014 issues) and

• HomeWorld Business (September 2014 issue) both publications displaying Opposer's SNACK-DUO advertisements;

• Applicant's written discovery response stating that it relies on its filing date of December 5, 2014 to establish priority;

• A cease-and-desist letter Applicant's counsel sent to Opposer on or about March 11, 2015;^[4]

• The declaration of Dave Palcek, President and co-founder of ICD Publications, publisher of HomeWorld Business, which displayed Opposer's SNACK-DUO advertisement in its September 2014 print issue;^[5]

• The declaration of Doug Poindexter, President of World Pet Association, which hosted the annual SuperZoo pet industry trade show in Las Vegas in July 2014, at which Opposer displayed its SNACK-DUO product;^[6]

• The declarations of Nick Musteen, Opposer's Sales Director, about the unveiling, promotion, and shipping of samples of its SNACK-DUO product;^[7]

• The declaration of Jeff Dennis, Opposer's Project Management Director, about the packaging and labeling of the SNACK-DUO product with hangtags bearing the mark, and its display at the July 2014 SuperZoo trade show;^[8]

• The declaration of Jeff Logan, Opposer's Marketing Director, about promoting the SNACK-DUO product, including by advertisements in Pet Business and Homeworld Business magazines;^[9]

• The deposition of Mark Kalaygian of MacFadden Communications Group, publisher of Pet Business magazine, regarding publication of Opposer's SNACK-DUO advertisements and circulation of the magazine;^[10]

• The declaration of Loriann Lombardo, Vice President of Product Development for Applicant, regarding Applicant's SNACKEEZ products, its marketing and promotional efforts, and the SNACKEEZ DUO product;^[11]

• The deposition of Jeffrey Dennis, Opposer's Project Management Director, by Applicant's counsel;^[12]

• The deposition of Jeff Logan, Opposer's Marketing Director, by Applicant's counsel;^[13]

• The deposition of Nick Musteen, Opposer's Sales Director, by Applicant's counsel.^[14]

II. Standing

Any person who believes it is or will be damaged by registration of a mark has standing to file an opposition. 15 U.S.C. § 1063. Our primary reviewing court has enunciated a liberal threshold for standing, namely that a plaintiff must demonstrate that it possesses a "real interest" in a proceeding and "a reasonable basis for his belief of damage." Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted), cert. denied, 135 S.Ct. 1401 (2015). A "real interest" is a "direct and personal stake" in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1026 (Fed. Cir. 1999). A claim of likelihood of confusion that "is not wholly without merit," including prior use of a confusingly similar mark, may be sufficient "to establish a reasonable basis for a belief that one is damaged." Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982) quoted in Executive Coach Builders, Inc. v. SPV Coach Co., Inc., 123 U.S.P.Q.2d 1175, 1179 (TTAB 2017). Here, Opposer has established that the parties are competitors; it has, accordingly, a real commercial interest in this proceeding. See Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 U.S.P.Q.2d 1301, 1302 (Fed. Cir. 1987) (competitor has standing to challenge registration). Moreover, Opposer received a cease-and-desist letter from Applicant claiming that the parties' marks would cause a likelihood of confusion.^[15] "[C]ease and desist letters provide additional evidence that opposer has business interests that have been affected, i.e., a real interest in the proceeding, and thus, has standing." Miller v. Miller, 105 U.S.P.Q.2d 1615, 1619 (TTAB 2013) quoted in Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 U.S.P.Q.2d 1844, 1848 (TTAB 2017). Opposer's standing is thus established.

III. Priority

To prevail on the ground of likelihood of confusion under Section 2(d) of the Lanham Act, based on a previously used mark, it is the Opposer's burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1848 (Fed. Cir. 2000). A party seeking to cancel a registration under Section 2(d) must prove that it has proprietary rights in the term it relies upon to demonstrate likelihood of confusion as to source. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40, 43 (CCPA 1981). A party may establish its own prior proprietary rights in a trademark through ownership of a registration, through actual use, or through use analogous to trademark use. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B. Sys., 32 U.S.P.Q.2d 1668 (TTAB 1994). Here, because Opposer has not pleaded or submitted any registrations, it must rely on its asserted common law rights, which must precede Applicant's actual or constructive use of its mark. Weapon X Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 U.S.P.Q.2d 1034, 1040-41 (TTAB 2018).

Applicant relies on December 5, 2014, the filing date of its Section 1(b) intent-to-use application to register SNACKEEZ DUO, as its constructive use priority date.^[16] See Zirco Corp. v. American Telephone and Telegraph Co., 21 U.S.P.Q.2d 1542, 1544 (TTAB 1991) ("[T]here can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights").

Although Opposer made its first actual commercial sales of its SNACK-DUO product in interstate commerce beginning in January 2015, ^[17] about a month after Applicant's constructive use date, Opposer claims priority based on use analogous to trademark use of SNACK-DUO since early July 2014, and based on interstate shipment of two samples bearing the SNACK-DUO mark to a retailer in the months preceding Applicant's December 5, 2014 constructive use date. We examine each of these two bases for priority in turn.

A. Analogous Use

It is well settled that use of a mark in a manner analogous to technical trademark use may furnish a valid basis for claiming priority and maintaining an opposition. T.A.B. v. PacTel, 37 U.S.P.Q.2d at 1881; L. & J.G. Stickley, Inc. v. Cosser, 81 U.S.P.Q.2d 1956, 1968 (TTAB 2007). As the Federal Circuit has observed: "[I]t has been pointed out that in relying on §2(d) of the Lanham Act as a ground of opposition, it is not necessary that an opposer prove prior use of a similar term in a strict trademark sense." Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 U.S.P.Q.2d 1638, 1639 (Fed.Cir.1989). Rather, "Use 'analogous' to trademark use means use of a nature and extent such as to create an association of the term with the user's goods. Examples of use analogous to trademark use to establish priority under §2(d) include prior use of a term: in advertising brochures, in catalogues and newspapers, and in press releases and trade publications." Id. (quoting 1 J. McCarthy, Trademarks and Unfair Competition §20:4 at 1023-26 (1984)). "Thus, even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer." Central Garden & Pet Co. v. Doskocil Mfg. Co., 108 U.S.P.Q.2d 1134, 1142 (TTAB 2013). See generally 2 J. McCarthy, Trademarks and Unfair Competition § 16:14 (5th ed. June 2018 update).

Opposer contends it has made analogous use of its SNACK-DUO trademark in precisely this way. In the first week of July 2014, five months before Applicant's filing date, Opposer introduced its SNACK-DUO product in Pet Business magazine, a trade publication with over 25, 000 recipients such as pet product retailers, pet store owners, buyers, as well as pet industry distributors, manufacturers, and other people associated with pet retail...