IP Law Daily, TRADEMARK—TTAB: Cancellation denied in LITTLE NOTES mark dispute for lack of priority, (May 17, 2023)

By Kevin M. Finson, J.D.

The cancellation petitioner—a seller of stationery—failed to show that its mark had the requisite acquired distinctiveness to establish priority over the challenged mark.

A seller of stationery seeking cancellation of a competitor’s mark was unable to show priority, the Trademark Trial and Appeal Board has held. The seller’s common law mark was highly descriptive and lacked acquired distinctiveness (Comptime, Inc. v. E. Frances Paper, Inc., May 11, 2023, Cataldo, P.).

E. Frances Paper, Inc. (Frances) was the owner of record for a registration on the Supplemental Register of the standard character mark LITTLE NOTES, with NOTES disclaimed, for a variety of goods including stationery, address books, calendars, and similar goods in International Class 16. Comptime, Inc. petitioned for cancellation of that registration on the ground of likelihood of confusion with Comptime’s common law rights in an identical mark used with announcement cards, printed invitations, and related goods in International Class 16. After noting that Comptime had shown it was entitled to a statutory cause of action as a competitor of the registrant, the board considered the DuPont factors for which there was evidence of record.

Likelihood of confusion. The Board found that there was little dispute that the parties were using identical marks to sell goods that were at least in part identical. Under those circumstances the Board held that a likelihood of confusion was inevitable.

Priority. Comptime argued that its mark was inherently distinctive, while at the same time arguing that Frances’ registration of an identical mark was merely descriptive. The board held that the mark was highly descriptive in both instances based on Comptime’s own dictionary definitions. Because the mark was highly descriptive, Comptime could not establish common law rights without a showing of acquired distinctiveness. Comptime failed to present evidence of consumer recognition of the mark as a source indicator, and advertising and sales numbers presented lacked context from which the Board could derive any information about the level of commercial success Comptime had achieved under that mark. The Board held that Comptime had failed to meet its burden to show acquired distinctiveness and therefore priority in the LITTLE NOTES mark.

The case is Cancellation No. 92073884.

Attorneys: Michael Wiener (Michael Wiener Law) for Comptime, Inc. Mark L. Seigel (Seigel Law Firm LLC) for E. Frances Paper, Inc.

Companies: Comptime, Inc.; E. Frances Paper, Inc.

Cases: Trademark USPTO