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INTA Bulletin

February 15, 2018 Vol. 73 No. 3 Back to Bulletin Main Page

UNITED STATES: Neither the Well-Known Marks Doctrine nor KORUS Provides Basis for a Prior Use Claim

The Trademark Trial and Appeal Board (Board) dismissed Sun Hee Jung’s (the opposer’s) opposition, which was based on a claim of likelihood of confusion of her mark SULBING with Magic Snow’s (the applicant’s) mark SUL BING. Sun Hee Jung v. Magic Snow, LLC, Opposition No. 91226056 (Sept. 20, 2017). The Board held that the opposer’s use of her mark in Korea failed to confer prior use in the United States under either the well-known marks doctrine or the U.S.-Korea Free Trade Agreement (KORUS FTA). The Board also dismissed the opposer’s claim of the applicant’s non-use in commerce. The opposer’s claim of priority and likelihood of confusion was premised on the fame of her mark in Korea. The opposer’s claim of non-use in interstate commerce was based on the fact that the applicant had only one store location in Virginia, the applicant’s sales were made in person, and thus such use was not “in ‘commerce’ as defined by the Trademark Act.”

The applicant moved to dismiss the opposition for failure to state a claim as to the asserted claims of likelihood of confusion and non-use in commerce. The applicant argued that the opposer’s foreign use, even under KORUS FTA, failed to provide prior rights. Further, the applicant argued it needed only to prove that services were rendered to customers traveling across state boundaries.

The Board agreed with the applicant and dismissed the opposition for failure to allege prior use in the United States under Section 2(d) and for failure to allege non-use in interstate commerce. Importantly, the Board noted that “(u)nder the ‘well known mark’ doctrine … a party asserts that its mark, while as yet unused in the United States, has become so well known here that it may not be registered by another.” The Board held that the “well-known mark” doctrine provided no basis for a Section 2(d) ground for opposition because it did not establish use of the mark in the United States as required by the statutory language under Section 2(d). Similarly, the Board held that foreign use under KORUS FTA failed to establish use in the United States sufficient for a Section 2(d) priority claim.

With respect to the non-use in commerce claim, the Board held that the opposer failed to allege that the “Applicant’s rendering of its services, in the aggregate, does not have effect on commerce that is regulable by Congress.” Accordingly, the Board found that the opposer failed to adequately plead her Section 2(d) and non-use claims and thus dismissed the opposition.

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