use analogous to trademark use

A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use.

In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO  for “beverage ware; 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.  In support of its notice of opposition, Opposer relied on its priority use of its common law mark SNACK-DUO as used on food and drink containers.   Opposer grounds for the opposition was a likelihood of confusion under Section 2(d) of the Trademark Act.

To establish proof of its priority common law use, the Opposer submitted seven declarations and three deposition testimonies.   The declarants and witnesses included the President of World Pet Association that hosted a industry trade show where Opposer displayed its SNACK-DUO product; the President of ICD Publications that ran an advertisement of Opposer’s SNACK-DUO product in its September 2014 print issue; and Opposer’s Sales, Marketing, and Project Management Directors.

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.   Here, since Opposer did not have a prior registration and did not establish first use prior to Applicant’s constructive first use date, it had to establish its priority rights based on use analogous to trademark use.  In addition, Opposer introduced evidence of a shipment of two samples of its SNACK-DUO product to a retailer that was done prior to Applicant’s constructive first use date.

What is use analogous to trademark use?  Use analogous to trademark use is invoked for the purpose of establishing priority in a 2(d) likelihood of confusion case.   The predicate for such a claim is that the relevant consuming public must associate the mark with the party invoking such analogous use.  Such proof may include prior advertising in newspapers or other consumer or trade publications; including press releases.  Here, the Opposer was able to show analogous use activities that predated Applicant’s constructive first use date through advertising in a trade show publication that reached over 25,000 recipients as well as generated pre-sales inquiries.  It also placed its SNACK-DUO product on display at the Super Zoo Trade Show, attended by over 16,000 individuals and 910 companies.  Opposer’s product won second-place for new products for dogs.

Based on a totality of the evidence, the Board found that Opposer had indeed established its priority through use analogous to trademark use and went on to find a likelihood of confusion between the parties’ marks.   The opposition was sustained in favor of the Opposer.