Hollowform, Inc. v. Aeh

RICH, Judge. This appeal is from the Trademark Trial and Appeal Board’s decision, 180 USPQ 284 (1973), dismissing appellant’s opposition to the registration of TOP-KAT as a trademark for camping trailers and truck campers, application serial No. 394,999, filed June 16, 1971. Decision was rendered on applicant’s motion to dismiss the opposition for failure to state a claim upon which relief can be granted. The opposition was predicated on op-poser’s claim that it was the owner of the trademark TOP KAT for truck campers in twelve western states in which it used the mark before the applicant, doing business in Florida, had used her trademark in opposer’s territory. However, the pleaded dates of opposer’s uses were all subsequent to the applicant’s filing date. Opposer has no registration. The sole issue is whether the board erred in granting applicant’s motion to dismiss the opposition because it failed to state a claim which, if proved, would defeat applicant’s right to secure the unrestricted registration applied for. The only question before us is whether oppo-ser’s allegations, if true, would establish that applicant is not entitled to the registration. The board’s view was that “it must be pleaded by the plaintiff [opposer] that the registration of the mark which it is challenging is inconsistent with an equal or superior right of the plaintiff to the use of the same or a like term in connection with goods or services which are similar’’ and that “the salient question is whether applicant was the first to use the mark ‘TOPKAT’ for camping trailers and truck campers in commerce which may lawfully be regulated by Congress.” It found that opposer conceded applicant to be the first user. We find that oppo-ser continues to make that concession. A sentence in the concluding paragraph of its brief is: Opposer’s first concurrent lawful use in commerce was on August 13, 1971, * * * which was after, not prior to, the Applicant’s filing date June 16, 1971. Conceding priority of use of what is in contemplation of law an identical mark on identical goods, appellant’s only argument is that it has “alleged a common law use of the trademark in the twelve (12) western states that Applicant cannot stop.” The board’s answer was: While it may be that opposer possesses superior rights in the mark “TOPKAT” in the several states enumerated by it, these asserted rights may be recognized in the Patent Office only in an appropriate concurrent use proceeding which may properly be instituted only after the filing by op-poser of its own application for the registration of its mark on a concurrent use basis.1 Opposer is not here asking that applicant’s registration be territorially limited but that it be denied. Vandenburgh, Trademark Law and Procedure § 10.34(b) at 407 (2d ed. 1968), citing Aeronautical Electronics, Inc. v. Aerotron Radio Co., 120 USPQ 488, 489 (Com’r.Pats. 1959), says: The prior user of the mark anywhere in the United States normally is enti1176 tied to an unlimited registration even though he may be only using in a portion thereof. In the Aeronautical Electronics case Assistant Commissioner Leeds pointed out, in response to a request to restrict a registration territorially in an interference, that * * * no authority is found for issuing a restricted registration to an applicant which has established its superior [prior] rights in a mark. We agree with appellee that whatever common law rights opposer may have in its states of use are completely irrelevant here and that the fact that a subsequent user adopts a mark in good faith in a territory where the prior user’s mark has not been known or used will not preclude registration of the pri- or user’s mark. Since appellant’s rights in the mark are not superior to appel-lee’s right to registration, appellant cannot be legally “damaged,” as that term has been construed, by the issuance of a registration to appellee. American Novawood Corp. v. U. S. Plywood-Champion Papers Inc., 426 F.2d 823, 57 CCPA 1276 (1970); 1 J. McCarthy, Trademarks and Unfair Competition § 20.2B (1973). We therefore agree that the opposition notice did not plead facts on which relief could be granted and the board properly granted applicant’s motion to dismiss. The decision of the board is affirmed. Affirmed. Footnotes [1] Appellant complains of this remark that the board “was apparently not familiar either with the law or the facts of this case” because under the statute, 15 U.S.C. § 1052(d), it cannot institute concurrent use proceedings because it was not using its mark prior to applicant’s filing date. We do not think the board was oblivious to the situation. It was simply pointing out that whatever rights opposer may have to use the mark cannot here be adjudicated. In its next sentence the board said: “The present proceeding, on the other hand, is directed solely to applicant’s right to a geographically unrestricted registration.”