In a precedential decision, The Trademark Trial and Appeal Board (“TTAB”) refused to reconsider its decision sustaining an opposition to registration of the mark “LOVETTE” on the basis of likelihood of confusion with the mark “NNENNA LOVETTE.” Nkanginieme v. Appleton, 2023 TTAB LEXIS 64 (TTAB Mar. 7, 2023). In its request for reconsideration Applicant, Lovette Appleton, argued that the TTAB had improperly found that priority was not at issue based on Opposer’s registration of the mark NNENNA LOVETTE, which matured to registration on the Principal Register prior to the close of Opposer’s testimony period, and was entered into the record by Notice of Reliance filed during that period.

Here, Opposer had filed the underlying application for the mark NNENNA LOVETTE on June 1, 2020, after Applicant had filed her application, the subject of this opposition, on December 30, 2019. Opposer’s application proceeded to registration during the course of the opposition proceeding. Applicant argued that “[t]he Board erred in removing the ‘priority’ element from Opposer’s ‘priority and likelihood of confusion claim’ and allowing Opposer to rely solely on a registration with a constructive priority date that postdates Applicant’s application by five months. In other words, Opposer prevailed by virtue of an application she filed after the opposed application.” Notably, Applicant did not file a counterclaim or separate petition for cancellation related to Opposer’s NNENNA LOVETTE registration.

Under Section 2(d) of the Trademark Act it is required that the party opposing registration demonstrate rights to a registered mark or  rights to “a mark (or trade name) previously used in the United States and not abandoned.” Proving priority of use is only required when an unregistered mark is asserted as a bar to registration. Thus, when the NNENNA LOVETTE mark matured into a registration, it could be asserted to refuse registration of another mark (in this case, the LOVETTE mark) even though Applicant had filed for the LOVETTE mark before Opposer had filed for the NNENNA LOVETTE mark. Applicant’s recourse was to file a counterclaim or separate petition for cancellation pursuant to Trademark Rule 2.106(b)(3)(ii).

Applicant argued this results in an “absurdity” where “the only way to put priority back at issue . . . is to file a separate opposition against Opposer’s application or a cancellation action after it registers. And filing such a claim to assert priority would require Applicant to claim that Opposer’s mark is likely to be confused with Applicant’s mark, a position is that [sic] completely at odds with her defense in this Opposition, where she has denied any likelihood of confusion.” The TTAB explained there was no “absurdity” here because the Trademark Rules plainly allow alternative positions. Applicant should have filed a counterclaim and argued alternatively that “there is no likelihood of confusion between the marks such that the opposition should be dismissed, or that if there is a likelihood of confusion that Applicant has actual priority and so Opposer’s registration must fall.”

This decision serves as a reminder to monitor the filings of a party opponent during the course of TTAB proceedings and to take actions to preclude issuance of a registration which could bolster the case of the party opponent. An understanding of how the TTAB’s procedural rules can be used by or against a party is important.