A recent trademark opposition case before the U.S. Trademark Trial and Appeal Board presents a discussion of priority based on common law rights.

In Mazama Brewing Company, LLC v. Sumerian Brewing Company, LLC, Applicant sought registration of the mark HOPRUPTION DOUBLE IPA for beer in Class 32.  Opposer brought a motion for partial summary judgment based on likelihood of confusion with its mark HOP ERUPTION for beer; and false suggestion of a connection with Opposer.  Opposer assertion of common law trademark  rights was  based on its use of the HOP ERUPTION Mark dating back to May 2013.  Applicant’s filing date was February 8, 2017.

In support of its claim of common law priority, Opposer submitted various newspaper articles, invoices, social media mentions, customer testimonials, and label approvals for its HOP ERUPTION product dating back to 2013.  Opposer further argued that the parties goods were identical and traveled in the same channels of trade.  Opposer also claimed that purchasers of beer products are more likely to make impulse purchases, thereby making confusion more likely.   Moreover, since Applicant had to disclaim  “DOUBLE IPA” as being descriptive of beer, the comparison between the marks was HOPE ERUPTION and HOPRUPTION.  Opposer argued that this meant the both marks conveyed the same commercial impression.

Applicant argued that Opposer’s common law rights and evidence were limited to Oregon and to a lesser degree Washington state only.  Additionally, Applicant argued that any likelihood of confusion was diminished by the existence of numerous third-party marks for beer that contained the terms “hop” and/or “eruption.”

To establish priority of use, a party must show that its owns a mark or trade name previously used in the United States and not abandoned.  A plaintiff may prove prior use through either actual use or use analogous to trademark use, such as advertising brochures, newspaper publications, or websites which create a public awareness of the designation of the trademark as an identifying source.   Here, the Board concluded that Opposer met its burden on the issue of priority by showing prior use of the HOP ERUPTION Mark dating back to at least 2013.  With regard to the likelihood of confusion claim, the Board found that Opposer had not met its burden of demonstrating that there was no genuine issue of material fact regarding certain of the likelihood of confusion factors.  Accordingly, Opposer’s motion for summary judgment on the issue of likelihood of confusion was denied, even though the Board found that it had established its priority common law rights.

Practitioner’s note:   It is important for companies to establish documentary evidence of its trademark use as early as possible.  This is vitally important should its common law rights be contested at some time in the future.  Innovative companies such as Cognate assist brand owners in recording such marketplace evidence using blockchain technology.  By way of full disclosure, the author is an advisor to Cognate and its principals.

 In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.