• Never Underestimate the Burden of Proof

    by  • October 28, 2015 • trademark • 0 Comments

    Trademark examining attorneys occasionally make mistakes and often the error can’t be challenged once the trademark is registered.* In Vujovic v. Octop there was a clear procedural error and it was most likely outcome determinative.

    Two people worked together at a company called “Octop.” The opinion doesn’t have much information (because most of the evidence wasn’t admissible), but we can gather that Aleksandar Vujovic and Ramona LaFountain worked together as Octop, had a falling out, and each filed applications to register the mark OCTOP for similar services.

    The examination error is that the second-filed application was not refused under Section 2(d) and so it became a registered trademark. That shouldn’t have happened:

    Although the Vujovic later-filed application should have been held up pending a determination on the conflicting, earlier-filed Octop application, it was sent to publication and then issue. As noted recently in the case of In re House Beer, LLC, 114 USPQ2d 1073, 1075 (TTAB 2015):

    When the marks in two or more pending applications filed by different applicants appear to be sufficiently similar that they may ultimately require a refusal of registration under § 2(d), they are considered “conflicting applications.” It is USPTO policy to process conflicting applications in the order of their filing dates (or effective filing dates), such that the application having the earliest effective filing date will be the first to proceed toward publication for opposition (if it is eligible for registration on the Principal Register) or toward registration if it is eligible for registration on the Supplemental Register. Trademark Rule 2.83(a), 37 C.F.R. § 2.83(a); TMEP § 1208.01. As for the conflicting applications that have later effective filing dates, the assigned examining attorneys will suspend action until the earlier-filed application either matures into a registration or is abandoned. 37 C.F.R. § 2.83(c); TMEP § 1208.01.

    Despite this serious procedural mishap, § 2(d) of the Trademark Act makes no allowance for the filing date of the application underlying Vujovic’s claimed registration. Having his federal trademark registration in hand, Vujovic is entitled to the presumptions of Section 7(b) of the Act, including the validity of his registered mark and of the registration of the mark, of his ownership of the mark, and of his exclusive right to use the registered mark in commerce on or in connection with the services specified in the certificate.

    So rather than having an opposition and a suspended application between two warring owners, we have an opposition and a cancellation.

    Which made all the difference. The Board acknowledged that the “one most critical fact” was that the second-filed application was entitled to the presumptions of a registered trademark, with the result that the attempt to cancel it failed:

    [E]ven if we were to consider the authenticated documents for the truth of the matter asserted, we find no admissions which go to material facts relating to ownership by either party. Hence, despite the arguments made in Petitioner’s brief in support of cancellation, in the face of Vujovic’s Section 7(b) presumptions as to his ownership of the mark, this evidence of record is insufficient to establish Petitioner’s case that Vujovic is not the rightful owner of the OCTOP mark.

    And given that both parties were claiming rights to the same mark, Vujovic’s success in his opposition to the Octop application was a virtual given: “with identical marks as well as identical, overlapping or closely related services, we find an obvious likelihood of confusion.”**

    Thus, the outcome in Vujovic’s favor may have been entirely due to the procedural error during examination.

    But, I wouldn’t read too much into the nonprecedential opinion; the real flaw in the case was that there was very little admissible evidence, and what evidence there was was largely irrelevant. But the decision highlights the advantage of a registration.

    The opinion is also notable for its most awesome use of imagery for the evidence. Just look at page 9.

    Vujovic v. Octop, Opp. No. 91210908, Can. No. 92058642 (TTAB Sept. 29, 2015).

    *See AS Holdings, Inc. v. H & C Milcor, Inc., 2013 TTAB LEXIS 388, *11, 107 U.S.P.Q.2D (BNA) 1829, 1833 (TTAB Aug. 6, 2013) (whether amendment by applicant to the original drawing was a material alteration of the original drawing could not be challenged in an opposition); Melwani v. Int’l Whisky Co., 2011 TTAB LEXIS 403, *11-12 (TTAB Dec. 21, 2011) (The failure to republish the application is an ex parte procedural issue which does not form the basis for a claim before the Board); Flash & Partners S.P.A. v. I.E. Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) (issue of compliance with application signature requirement is an ex parte examination issue not a basis for a claim); ER Marks, Inc. v. Quarles Petroleum, Inc., 2007 TTAB LEXIS 660, *5 (TTAB May 30, 2007) (whether specimen of use is acceptable is an ex parte examination issue and does not constitute a valid ground for cancellation); Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Syst. Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (ex parte question of the sufficiency of the description of the mark not be a ground for opposition or cancellation) ; Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (failure to enforce requirement of filing of foreign registration is examination error and not a ground for counterclaim for cancellation) ; Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (insufficiency of the specimens, per se, does not constitute grounds for cancellation); Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d 2034, 2035 (TTAB 1989) (adequacy of specimens is solely a matter of ex parte examination).

    ** “Not surprisingly, an analysis of the du Pont likelihood of confusion factors — designed for cases in which the litigation is usually between two unrelated entities that may happen to be using similar marks in connection with related goods or services — is ill-suited for situations in which two parties are disputing ownership of the same trademark once shared. See Pamela S. Chestek, ‘Who Owns the Mark? A Single Framework for Resolving Trademark Ownership Disputes,; 96 TRADEMARK REPORTER 681 (2006).” [Yes, that is a shameless plug. Ed.]

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