A trademark cancellation proceeding for likelihood of confusion was recently decided by the Board. It is a good lesson in evidentiary best practices.
In Marco Industries, Inc. v. Mark White, the Petitioner sought to cancel U.S. Reg. No. 4880452 of VITABUD GROW for fertilizers in International Class 1. The petition for cancellation alleged that the Registrant’s mark creates a likelihood of confusion with Petitioner’s common law mark VITAGROW for plant foods.
In proving likelihood of confusion, the burden is on the Petitioner to first establish proprietary rights in its common law mark. This may be shown through a prior registration, prior trademark use, or prior use as a trade name. It may also be proven through prior use analogous to trademark use. In this case, the Petitioner had to establish proprietary rights in its VITAGROW mark. It also had to show that its mark is distinctive of its goods. Distinctiveness can be either inherent or acquired. The Petitioner would also have to show that its proprietary rights in and to its mark preceded the Registrant’s rights.
In this case, the Registrant’s application date operated as the priority date. This was May 8, 2015. The Petitioner introduced evidence of its use use of the VITA GROW Mark prior to 2014. The evidence consisted of two pages of website archive page printouts from 2007 and 2008. Despite this limited evidence, the Board held that the Respondent did not properly challenge the website printouts as hearsay. Specifically, the Board held that it was incumbent on the Respondent to object to Petitioner’s evidence and it did not. Since Petitioner’s evidence was submitted by Notice of Reliance, and not through testimony, the Respondent could have had the website pages stricken as impermissible hearsay. Its failure to do so acted as as a waiver to any objection to the evidence. Therefore, the website evidence of priority was admitted by the Board. This procedural error proved fatal.
Attorney note: Trial testimony in trademark opposition and cancellation cases may be submitted in one of two primary ways. These are through oral or written testimony (via witness declaration) or through a Notice of Reliance. Evidence submitted in connection with a Notice of Reliance is generally limited to self-authenticating evidence. If a party attempts to introduce evidence in its Notice of Reliance (such as website pages), it is proper to do so only in limited circumstances. If the evidence is being offered to establish the truth of the matter asserted in the print-out, then it can be challenged as hearsay.