IP Law Daily, TRADEMARK—TTAB: Cancellation granted based on prior use of TONOSOMA mark for candy, (Sep 27, 2022)

By Kevin M. Finson, J.D.

Cancellation of a registration for the mark TONOSOMA was granted because another seller established prior use of an identical mark used on legally identical goods.

A seller of candy was entitled to cancellation of a competitor's registration for the mark TONOSOMA for candy, the Trademark Trial and Appeal Board has held, in a decision designated as precedential. The seller submitted declarations that established prior use of an identical mark on legally identical goods as a matter of law (Narita Export LLC v. Adaptrend, Inc., September 20, 2022, By the Board).

Adaptrend, Inc. (Adaptrend) owned a registration of the mark TONOSOMA, in standard characters, for use with “gift baskets containing candy; candy; candies; gift baskets containing candy and Japanese candies” in International Class 30. Narita Export, LLC (Narita) petitioned to cancel the registration on the ground of likelihood of confusion with its common law rights in an identical mark and moved for summary judgment. Narita had itself petitioned to register the mark, but its petition was denied on the ground of Adaptrend's existing registration. Before the Board was Narita’s motion for summary judgment.

Priority. While the parties disputed the proper priority date for Narita, there was no dispute that Narita's first use in commerce was before Adaptrend's priority date. In support of its motion for summary judgment, Narita submitted the declarations of its attorney, Ms. RiKaleigh Johnson, its president, Mr. Keigo Narita, and the former president of respondent’s Kabushiki Kaisha TI Express (“TI Express”), Mr. Teruhiko Izumi. The Board found that the declarations made a sufficient showing of personal knowledge of the stated facts.

After determining that there was no dispute about entitlement to a statutory cause of action or priority, the Board applied the DuPont factors for which there was evidence of record.

Similarity of marks and goods. Both parties sought registration for use with “candy,” so the goods were in part legally identical. Narita argued, and Adaptrend did not dispute, that the remaining goods were related and the marks were identical.

Channels of trade. Both parties admitted they sold their goods on Amazon.com, so the channels of trade were at least overlapping.

The Board noted that the remaining factors were not significant in its analysis because of the high weight given to the fact that the marks were identical and the goods and channels of trade were identical at least in part. The motion for summary judgment and petition to cancel were granted.

The Case is Cancellation No. 92074784.

Attorneys: Patrick G. Burns (Greer Burns & Crain Ltd.) for Narita Export LLC. Joseph A. Mandour (Mandour & Associates APC) for Adaptrend, Inc.

Companies: Narita Export LLC; Adaptrend, Inc.

Cases: Trademark USPTO