Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PACTEL TELETRAC, SUBSTITUTED AS ASSIGNEE OF INTERNATIONAL TELETRAC
SYSTEMS, INC.
v.
T.A.B. SYSTEMS
Opposition No. 88,669
August 29, 1994
Before Cissel, Seeherman and Quinn
Administrative Trademark Judges
By the Board:
R.F. Cissel, E.J. Seeherman and T.J. Quinn
Administrative Trademark Judges
Applicant T.A.B. Systems has filed an application to register the mark TELETRAK for services recited as "goods registration services; namely, attachment of tag to goods to deter loss or theft, and the provision of a telephone hotline for the registry, reporting and recovery for such loss," in Class 42. [FN(1)] The application alleges October 27, 1989 as the date of applicant's first use of the mark and first use of the mark in commerce. [FN(2)]
PacTel Teletrac [FN(3)] has opposed registration of applicant's mark, alleging in its notice of opposition that opposer has used the term TELETRAC as a service mark in connection with vehicle location services since on or before November 1, 1990 and as a trade name and in advertising since June 2, 1989; that these dates are prior to applicant's actual date of first use in commerce or any date on which applicant may rely for priority purposes; and that a likelihood of confusion exists between the parties' marks as applied to their respective services. [FN(4)]
In its answer to the notice of opposition, applicant admits that confusion is likely as between applicant's TELETRAK mark and opposer's TELETRAC mark, but denies that opposer has prior rights in the mark. Applicant denies that opposer's activities prior to November 1, 1990 (the date of first use in commerce alleged in opposer's applications for registration) entitle opposer to claim priority rights. [FN(5)]
This case now comes up on the parties' cross-motions for summary judgment on the issue of priority. The parties do not dispute the existence of a likelihood of confusion as between the terms TELETRAC and TELETRAK, as used in connection with their respective services. [FN(6)]
Summary judgment is appropriate in cases where the moving party establishes that there are no genuine issues of material fact which require resolution at trial and that it is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The purpose of summary judgment is judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. See Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984).
We turn first to opposer's motion for summary judgment. Opposer makes three alternative arguments in support of its claim of priority, which may be summarized as follows. First, opposer argues that the date of opposer's first technical use of its service mark in commerce (on or before November 1, 1990, as admitted in applicant's answer to the notice of opposition) predates applicant's date of first technical use. In support of this argument, opposer contends that applicant's first technical use of the mark was not in October 1989, as claimed by applicant, but rather in February 1991. Opposer asserts that a post card mailing undertaken by applicant in October 1989 and relied upon by applicant as the basis of its priority claim did not constitute "use in commerce" under the Trademark Act because it was intended as a market survey, not as an offer of services, and because applicant was not rendering the services at the time of the mailing.
*2 Opposer's second argument in support of its summary judgment motion is that, even if applicant's October 1989 mailing were sufficient to constitute "use in commerce" under the Trademark Act, opposer was using the term TELETRAC prior to October 1989 as a trade name and also in a manner analogous to service mark use, and that this use is sufficient to give opposer priority rights in its mark and to bar registration of applicant's mark under Trademark Act Section 2(d). [FN(7)]
In short, opposer contends that there exist no genuine issues of material fact as to the dates of the parties' first technical uses of their respective marks, as to opposer's priority of such use, or as to opposer's prior use of TELETRAC as a trade name and also in a manner analogous to service mark use, and that opposer's prior use of TELETRAC entitles opposer to judgment as a matter of law.
Opposer's motion for summary judgment is accompanied by voluminous supporting materials, including various declarations with documentary exhibits and also excerpts from discovery depositions taken in the course of this proceeding.
Applicant has contested opposer's motion for summary judgment and has filed a cross-motion for summary judgment. In summarized form, applicant's summary judgment arguments are as follows. First, applicant contends that its October 1989 post card mailing was a valid "use in commerce" which gives applicant priority over opposer's date of first technical service mark use on November 1, 1990, or any other date of first use in commerce opposer may claim.
Second, applicant argues that opposer's use of the term TELETRAC prior to applicant's date of first use in October 1989 did not constitute "analogous use" sufficient to entitle opposer to priority under Section 2(d), because (i) opposer was not rendering any services during the time of such use, (ii) opposer's use of the term TELETRAC was not sufficiently "open and notorious" to constitute analogous use, inasmuch as opposer was using other terms, not TELETRAC, to identify its services, and (iii) the lapse of time between opposer's asserted analogous use and the date of opposer's first actual use of the term as a service mark was commercially unreasonable.
In support of its summary judgment arguments, applicant has submitted the declaration of its principal, Allen Chance, the declarations of five persons who are employed by or are officers of companies involved in the automobile security field, and certain of opposer's responses to applicant's discovery requests.
Opposer has filed a reply brief in support of its summary judgment motion and a brief in opposition to applicant's cross-motion for summary judgment, together with additional evidentiary materials.
Our analysis of this priority dispute begins with opposer's argument that its use of the term TELETRAC as part of its trade name and also in a manner analogous to service mark use since a time prior to applicant's claimed first use of its mark TELETRAK on October 27, 1989 gives opposer priority rights in the term sufficient to bar registration of applicant's mark under Trademark Act Section 2(d). After reviewing the parties' arguments and evidence on this issue, we find that there is no genuine issue of material fact as to opposer's continuous use of the designation TELETRAC in a manner analogous to service mark use since a time prior to the earliest priority date claimed by applicant, and that this prior analogous use by opposer entitles opposer to judgment as a matter of law.
*3 Because we find that opposer's analogous use is sufficient to establish opposer's priority, we need not and do not address opposer's claims based on priority of technical service mark use and priority of trade name use. [FN(8)] Nor need we decide the parties' dispute as to whether applicant's post card mailing on October 27, 1989 constituted "use in commerce," because even if it did, opposer's analogous use predates that mailing and suffices to establish opposer's priority.
Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), precludes the registration of a mark which so resembles a registered mark or a mark or trade name previously used in the United States by another and not abandoned as to be likely, when applied to the goods or services of the applicant, to cause confusion, mistake, or to deceive. An opposer relying on Section 2(d) as a ground of opposition to registration of an applicant's mark must establish its own prior proprietary rights in the same or a confusingly similar designation.
As indicated in Section 2(d), an opposer's prior use can be in the form of a trademark or service mark or as a trade name. However, the concept of a proprietary right in a designation sufficient to support an opposition under Section 2(d) has by judicial determination expanded beyond technical trademark or service mark use and trade name use to what has been referred to as use "analogous" to trademark or service mark use. Era Corporation v. Electronic Realty Associates, Inc., 211 USPQ 734, 745 (TTAB1981).
Examples of use analogous to trademark use to enable the user to tack on non-trademark usage to establish priority under Section 2(d) include prior use of a term: in advertising brochures; in catalogues and newspaper ads; and in press releases and trade publications.
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 20.04[2] at 20-32 (3d Ed.1994) (footnotes omitted). Use of a term or designation will be deemed to be use "analogous" to trademark or service mark use if it is "of such a nature and extent as to create an association of said term with a single source." Era Corporation v. Electronic Realty Associates, Inc., supra, 211 USPQ at 745.
In this case, opposer's uncontradicted evidence establishes the following undisputed facts pertaining to opposer's claim of analogous use priority.
North American Teletrac was incorporated (in that name) in California on May 7, 1984. Also formed was a wholly-owned subsidiary, DMI Systems, Inc., which served as an operating company for North American Teletrac. During 1983 and 1984, North American Teletrac was engaged in developing the technology for its vehicle radio-location services. [FN(9)] On May 5, 1985, North American Teletrac applied for and received a license from the Federal Communications Commission to use certain radio frequencies.
*4 In December 1987, North American Teletrac formed a joint venture with Location Technologies, Inc., a subsidiary of Pacific Telesis. The joint venture was originally called Location Technologies. In June 1989 the joint venture adopted the name PacTel Teletrac on the advice of its public relations consultants. Around the same time, DMI Systems, Inc., the operating subsidiary of North American Teletrac, changed its name to International Teletrac Systems.
In July 1989, several press releases were issued by opposer's public relations firm on opposer's behalf, announcing the formation of the joint venture, describing the vehicle radio-location services, and stating that the services were to be commercially available in 1990. These press releases were issued on printed letterheads containing, in the upper right corner, the PacTel logo and the word TELETRAC directly underneath. The text of the press releases identified PacTel Teletrac and International Teletrac Systems, the wholly-owned subsidiary of joint venture member North American Teletrac, as the provider of the forthcoming services.
The record shows that one of these press releases was circulated nationally by BusinessWire (which identifies itself on its invoice as "an international press relations wire service"). The invoice identifies the subject of the circulated story as "International Teletrac Systems." Additionally, the press releases were included in a press kit which was distributed to 300 news organizations and potential customers in July 1989. The press kit was presented in a gray folder with the word TELETRAC embossed in red on the front cover.
Opposer developed a slide show marketing presentation which was presented to at least seven potential vehicle fleet customers between July 19, 1989 and October 12, 1989, with three additional presentations in November 1989. The slides identified PacTel Teletrac and International Teletrac Services as the provider of the forthcoming radio-location services. The text of the slides used the term TELETRAC to refer to the radio-location service and its various components and features, e.g., the "Teletrac System," the "Teletrac workstation," the "Teletrac Digital Voice Link," and "Teletrac Fleet Security Features." Most of the slides contained, in the upper left corner, the word TELETRAC in prominent red lettering.
On August 7, 1989, opposer maintained a booth at the trade show of the International Association of Auto Theft Investigators in San Diego, California. This trade show was attended by both the trade and by the general public. Opposer presented demonstrations of its services and distributed literature which prominently identified the provider of the services as International Teletrac Systems. A banner hung above opposer's booth contained the designation "International Teletrac Systems" in prominent red lettering.
In September 1989, opposer developed and distributed to prospective purchasers a marketing brochure. The sole wording on the cover of the brochure was INTERNATIONAL TELETRAC SYSTEMS, with the word TELETRAC presented with spaces between the letters and in bold print. The text of the brochure identified PacTel Teletrac and International Teletrac Systems as the provider of the services expected to be available in 1990. The brochure's back cover contained the following copyright notice:
*5 (c) 1989 International Teletrac Systems
and also included the following identification information:
INTERNATIONAL TELETRAC SYSTEMS
9800 La Cienega Blvd.
Suite 1005 A
213-216-5933
Fax: 213-216-7929
The record also contains photocopies of eleven different news articles which report on opposer's radio-location service and refer by name to PacTel Teletrac and International Teletrac Systems as the provider of the service. These articles appeared between September 10, 1989 and October 23, 1989 in general circulation newspapers, including the Wall Street Journal and the Chicago Tribune, and in more specialized trade publications such as Automotive Electronics Journal, Telocator, Autosound & Communications, Police, and Mobile Radio Technology.
Opposer's business activities utilizing the TELETRAC designation continued throughout 1990. These included the commencement, in April 1990, of actual operation of the radio-location system in Los Angeles County, California, the enrollment of twenty-four potential fleet customers on a trial basis, the establishment of a dealer network, and the printing and distribution of additional promotional literature and business forms which included the TELETRAC designation. A press release announcing the official commercial launch of the radio-location services was issued December 3, 1990.
Opposer contends that these activities establish opposer's priority rights in the TELETRAC designation under the doctrine of analogous use, and thus its entitlement to judgment as a matter of law. Applicant, in its response to opposer's motion for summary judgment, has not identified any genuine issue of material fact as to the above-summarized account of opposer's activities, but rather contests opposer's legal conclusion that those activities suffice to establish opposer's priority under the doctrine of analogous use. [FN(10)]
Applicant argues (i) that, as a matter of law, opposer may not rely on the doctrine of analogous use because, at the time opposer engaged in its alleged analogous use activities, it was not rendering any services, nor was it capable of rendering any services; and (ii) that, even if the doctrine of analogous use is legally available to opposer, opposer has failed to prove its right to priority under that doctrine because (a) opposer's use of the TELETRAC designation prior to the date of its first technical service mark use was not sufficiently open and notorious to create proprietary rights therein, and (b) any proprietary rights in the TELETRAC designation which might have accrued to opposer as a result of opposer's alleged analogous use activities were negated by the "commercially unreasonable" lapse of time between those activities and the date of opposer's first commercial performance of services under the mark. Each of these arguments will be discussed in turn.
Applicant's first argument is that opposer is not entitled to claim priority under the doctrine of analogous use because opposer was not providing any services at the time of the alleged analogous use activities, nor was opposer capable of providing such services at that time. Applicant contends that, at the time of opposer's alleged analogous use activities beginning in June 1989, opposer was nothing but a "corporate shell," and that, because the radio-location system upon which the rendition of opposer's services depends was not in commercial operation until late 1990, opposer was without a product or service available for sale during the period of the alleged analogous use activities.
*6 In support of this argument, applicant cites the Board's decision in Liqwacon Corporation v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979), wherein it was stated that "the first adopter [of a mark] who does not acquire or possess the capacity to market the goods or services for which the mark is intended must give way to a later adopter but prior user thereof in connection with a marketable product or service." Id. at 317. Applicant also notes that no case has ever held that a party to an inter partes proceeding may establish priority under Section 2(d) solely on the basis of use of a mark in the advertising of services prior to their actual rendition, citing In re Cedar Point, Inc., 220 USPQ 533 at 536 (TTAB 1983); see also Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1131, 196 USPQ 808 (CCPA 1978), and Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 77, 198 USPQ 271 (CCPA 1977).
Applicant's argument is unpersuasive. Even if, as applicant notes, there are no decisions which expressly hold that analogous use priority may be based on activities undertaken prior to the actual rendition or availability of the user's goods or services, neither have we been made aware of any decisions which expressly hold that, as a matter of law, analogous use priority may not be based on such pre-rendition activities. In fact, on occasion the Board has stated that, given a sufficient factual showing, analogous use priority might be based on activities undertaken prior to the rendition or availability of the user's goods or services.
For example, in Era Corporation v. Electronic Realty Associates, Inc., supra, the party claiming analogous use priority based its priority claim on its activities undertaken prior to the actual rendition of its services. As in the present case, the user's services involved and required use of a special network or system (an electronic real estate listing network) which was not yet operational at the time the user began its promotional and advertising activities using the mark in question. The Board rejected the user's analogous use priority claim, but only because the user's advertising and promotional activities had not been directed to the relevant purchasers of the future services. It is clear from the Board's discussion, however, that if the user's advertising and promotional activities, undertaken prior to the commercial availability of the services, had been directed to the prospective purchasers of the services, the Board would have allowed the user to tack those analogous use activities onto its first technical service mark use for purposes of determining priority. See id., 211 USPQ at 746.
*7 Other decisions have likewise contemplated that, in appropriate cases, analogous use priority may be found even where the goods or services are not yet offered or available at the time the analogous use activities are undertaken. In Computer Food Stores Inc. v. Corner Store Franchises, Inc., 176 USPQ 535 (TTAB 1973), the Board stated that priority based on use analogous to trademark use may be established by showing use of the mark "in a manner sufficient to demonstrate an intention to appropriate the particular word or symbol as an indication of origin for a particular service and to inform or apprise prospective purchasers of the present or future availability of the adopter's service under the mark." 176 USPQ at 538 (emphasis added). Also, in Evans Chemetics, Inc. v. Chemetics International Ltd., 207 USPQ 695 (TTAB 1980), the Board expressly referred to analogous use activities occuring prior to rendition of the services:
Whether use of a mark in advertising prior to the actual rendition of services under the mark is adequate to establish right [sic] in the mark depends on the evidence: at least the character and amount of the advertising must have been sufficient to have created a public awareness of the mark and its connection with the services to be offered. See Old Swiss House, Inc. v. Anheuser-Busch, Inc., 196 USPQ 808 (CCPA 1978). Assuming that such test would be satisfied, another question is whether the services were actually rendered or available for performance soon enough after the initial advertising campaign to preclude a finding that the advertising was merely an attempt to preempt a mark for use at an indefinite future date.
207 USPQ at 699-700.
Thus, while the Board may not have expressly held to date that analogous use priority may be based on activities undertaken prior to the commercial rendition or availability of the user's services, the Board's previous decisions clearly contemplate the availability of such priority in appropriate situations.
Nor does the Board's statement in Liqwacon Corporation v. Browning-Ferris Industries, Inc., supra, 203 USPQ at 317, that "the first adopter [of a mark] who does not acquire or possess the capacity to market the goods or services for which the mark is intended must give way to a later adopter but prior user thereof in connection with a marketable product or service" support applicant's argument that analogous use priority may not be based on activities undertaken prior to the commercial rendition or availability of the user's services. First, in this case it is undisputed that opposer did in fact "acquire" the capacity to provide its services. It is not dispositive that opposer did not "possess" that capacity at the time it began to engage in the analogous use activities. Second, the Liqwacon decision itself cites Computer Food Stores, Inc., supra, and repeats the language from that case, quoted above, regarding priority based on use of a mark "to inform or apprise prospective purchasers of the present or future availability of the adopter's service under the mark." Liqwacon, supra, 203 USPQ at 308 (emphasis added).
*8 In short, we are not persuaded by applicant's argument that opposer is precluded as a matter of law from claiming analogous use priority in this case merely because opposer was not rendering or capable of rendering its services at the time it engaged in the analogous use activities. Commercial availability of the services is not a legal prerequisite to a claim of analogous use priority; the existence of such priority depends on the facts of each case.
This leads us to applicant's alternative arguments. Applicant contends that opposer is not entitled to claim priority under the doctrine of analogous use because opposer has failed to establish the essential factual elements of such a claim, as those elements are set forth in Evans Chemetics, Inc. v. Chemetics International, Ltd., supra, 207 USPQ at 699-700 (quoted above at page 17).
First, applicant contends that opposer has not shown that its use of the TELETRAC designation in advertising prior to its first technical service mark use was sufficiently open and notorious to constitute use analogous to service mark use. Applicant bases this argument on its contention that, in the advertising and promotional materials upon which opposer's analogous use claim is based, opposer did not use TELETRAC to identify opposer's future services, but rather used other designations such as "Stolen Vehicle Locator Service," "Personal Alert Service," and "Corporate Fleet Locator Service."
This argument is unpersuasive. The fact that opposer may have been using these other terms and designations in its advertising of its future services, even in the manner of service marks, is not dispositive, because the uncontroverted evidence in this case clearly shows that opposer was also using the term TELETRAC in a manner analogous to service mark use for its vehicle location services. TELETRAC appeared prominently, and in the manner of a service mark, in the slide show presented to potential purchasers of the services beginning in July 1989. It appeared prominently on the cover of the folder containing the press kit opposer prepared and distributed to news organizations and potential customers in July 1989. It also appeared in the manner of a service mark on opposer's letterheads, upon which the press releases were printed. The cover of opposer's marketing brochure, distributed in September 1989, contained as its sole text the words INTERNATIONAL TELETRAC SYSTEMS, with the word TELETRAC specially emphasized.
Thus, even if applicant is correct in contending that opposer was using designations such as "Stolen Vehicle Locator Service," either generically or as service marks, in connection with its forthcoming services, opposer's evidence clearly establishes that opposer also was using the term TELETRAC in a manner analogous to service mark use, i.e., in a manner intended to create an association in the mind of the relevant purchasing public between the mark, the services to be offered, and a single source. See Era Corporation v. Electronic Realty Associates, Inc., supra, 211 USPQ at 746. See also Cities Service Oil Company v. Perfection American, Inc., 157 USPQ 209 (TTAB 1968) (use of one designation as a mark in connection with services does not preclude finding of analogous use priority rights in second term prominently used in the advertising of those services).
*9 Applicant next argues that even if opposer's use of the designation TELETRAC prior to its first technical service mark use were sufficiently open and notorious to constitute use analogous to trademark use, opposer has failed to satisfy the second prong of the Evans Chemetics test for establishing analogous use priority, which requires a showing that "... the services were actually rendered or available for performance soon enough after the initial advertising campaign to preclude a finding that the advertising was merely an attempt to preempt a mark for use at an indefinite future date." Evans Chemetics, supra, 207 USPQ at 699-700. Applicant asserts that there was a commercially unreasonable lapse of time between opposer's initial advertising activities, which began in mid-1989, and opposer's first commercial offering of the services in late 1990.
This argument is also unpersuasive. The uncontroverted evidence of record in this case clearly establishes that opposer's use of TELETRAC in connection with its advertising and promotional activities, while commencing more than one year prior to the actual commercial availability of the services, continued up to the date of first technical service mark use. Opposer's advertising and promotional materials identified a definite time frame for actual rendition of the services, which opposer fulfilled on schedule. We find that there was no lapse of time between opposer's ongoing advertising and other preparatory activities and its rendition of the services, much less a "commercially unreasonable" lapse of time. No reasonable fact finder could conclude on this record that opposer's activities were "merely an attempt to preempt a mark for use at an indefinite future date." Evans Chemetics, supra, 207 USPQ at 700.% n(11)%n
In short, the uncontroverted evidence of record in this case clearly establishes that, since a time prior to applicant's earliest-claimed priority date, opposer was a viable business entity engaged in ongoing activities in preparation for the commercial launch of its vehicle radio-location services, that these activities included advertising and promotional activities which were calculated to come to the attention of the relevant purchasing public, that opposer was using the designation TELETRAC in connection with those advertising and promotional activities in a manner analogous to service mark use, i.e., as an indication of source for the forthcoming services, and that opposer's use of the designation TELETRAC was not merely an attempt to warehouse the mark for use at an indefinite future date.
We find that the evidence of record clearly establishes that opposer is entitled to tack its prior advertising and promotional use of TELETRAC to its first technical service mark use of that term, and deem opposer's rights in the TELETRAC mark, for purposes of determining priority under Section 2(d), to date from at least as early as July 1989. The earliest priority date claimed by applicant is October 27, 1989. Thus, we find that there is no genuine issue of material fact as to opposer's priority.
*10 In view thereof, and because the parties have not disputed that confusion is likely as between opposer's TELETRAC mark and applicant's TELETRAK mark in connection with their respective services, we find that opposer is entitled to judgment as a matter of law. Accordingly, we grant opposer's motion for summary judgment, and deny applicant's cross-motion for summary judgment. [FN(12)] The opposition is sustained, and registration to applicant is refused. [FN(13)]
R.F. Cissel
E.J. Seeherman
T.J. Quinn
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/138,699, filed February 13, 1991.
FN2. For purposes of the present decision only, the Board assumes that the application alleges October 27, 1989 as the date of applicant's first use of the mark anywhere and first use of the mark in commerce. In actuality, the application file is unclear on this question. As originally filed, the application alleged December 28, 1989 as the date of first use anywhere and February 23, 1990 as the date of first use in commerce. (According to opposer's motion for summary judgment, applicant's principal Allen Chance testified in his discovery deposition that he was the person who completed and filed the application, that he had written "10-27-89" on the application form as the date of first use of the mark anywhere, but that the Office misread his illegible handwriting and entered December 28, 1989 as the date of first use anywhere. However, our review of the application papers reveals that the original notation of the date is in fact somewhat illegible, and that someone, presumably Mr. Chance, clarified the original notation by writing, in parentheses immediately to the right of the original notation, the date "12-28- 89." Also, the Board notes that the heading of the drawing page submitted with the application states that the date of first use anywhere was December 28, 1989.)
Next, we note that the application file contains what appears to be a facsimile transmission dated May 16, 1992 from Mr. Chance to the Publication Section of the Trademark Office, requesting entry of a post-publication amendment of the application to assert October 27, 1989 as the date of first use anywhere and the date of first use in commerce and also requesting republication of the mark in view of the amendment. The communication includes a Section 2.20 declaration signed by Mr. Chance. This paper is in the file, but does not appear to have been officially entered. There is no mail room date stamp or other date stamp on the paper indicating when the paper was received or how it came to be placed in the application file. In any event, the amendment to the dates of use was not entered.
Opposer appears to have assumed for purposes of summary judgment that the application alleges October 27, 1989 as the date of first use anywhere and date of first use in commerce. Because our decision herein is not dependent on an accurate determination of what the application asserts as applicant's dates of use, we too shall treat the application as asserting October 27, 1989 as the dates of first use, solely for purposes of this summary judgment motion. This issue will have to be revisited in the event that future proceedings herein are required.
FN3. Opposer's unopposed motion to substitute PacTel Teletrac as party plaintiff, filed May 5, 1993, is hereby granted.
FN4. Opposer asserts that its allegation of likelihood of confusion is made for purposes of this proceeding only. Opposer is the owner of two service mark applications (Serial Nos. 74/138,754 for the mark TELETRAC LOST AND FOUND HOTLINE and 74/143,787 for the mark TELETRAC) which were filed subsequently to the filing of applicant's application and which the trademark examining attorney has indicated may be refused under Section 2(d) in the event that applicant's application matures into a registration. Those applications are currently suspended pending the outcome of this opposition proceeding. Opposer states that it does not believe that confusion is likely, given the disparity between the parties' respective services, but that it is alleging likelihood of confusion for purposes of this opposition, in view of the examining attorney's position.
FN5. Applicant has also asserted three affirmative defenses in its answer: that the notice of opposition fails to state a claim upon which relief may be granted; that the activities alleged in the notice of opposition in support of opposer's claim of analogous use do not constitute analogous use for purposes of Trademark Act Section 2(d); and that opposer had been using and/or intending to use several other terms as service marks for its services, not the term TELETRAC, and that opposer is therefore guilty of "unclean hands" in asserting in the notice of opposition that it intended to use TELETRAC as a service mark prior to the date of applicant's first use of TELETRAK.
FN6. However, see the discussion above regarding opposer's position with respect to likelihood of confusion, supra at footnote 4.
FN7. Opposer also makes a third argument in support of its summary judgment motion, namely, that applicant's mark should be refused registration because applicant had not made use of the mark as of the filing date of the application. The application was filed on February 13, 1991, and opposer contends that the evidence of record establishes that applicant's first use of the mark in commerce was not until February 25, 1991. The Board notes that this third argument is based on a theory which has not been pleaded in the notice of opposition as a ground of opposition, and which therefore cannot serve as the basis for summary judgment. See Fed.R.Civ.P. 56(a) and 56(b); Estate of Biro v. Bic Corp., 18 U.S.P.Q.2d 1382 (TTAB1991). Accordingly, the Board has not considered this argument in deciding opposer's motion for summary judgment.
FN8. Our review of the evidence and arguments of record leads us to conclude that opposer has established prior and continuous use of the designation TELETRAC as a salient feature of its trade name. However, we decline to grant summary judgment to opposer on the basis of this prior trade name use at this time, because it does not appear that applicant has admitted by its pleading or conceded in its summary judgment arguments that a likelihood of confusion exists as between applicant's mark TELETRAK and opposer's trade names PACTEL TELETRAC and INTERNATIONAL TELETRAC SYSTEMS. Drawing all inferences in favor of applicant, as we must, we cannot say that, as a matter of law, applicant's mark is confusingly similar to opposer's trade names when viewed in their entireties.
FN9. In brief, it appears from the record that opposer's vehicle radio-location services involve a network of "base station" radio signal transmitters and receivers in fixed locations around a metropolitan area, and a mobile radio transmitter-receiver ("transceiver") mounted on the customer's vehicle. The mobile transceiver broadcasts a radio signal to the base stations, by which the location of the vehicle can be determined. The services are used for vehicle fleet tracking and management, as well as for tracking and locating stolen vehicles.
FN10. However, applicant argues that the only facts which are properly of record with regard to opposer's analogous use priority claim are those facts set forth in paragraph 7 of the notice of opposition and those activities identified in opposer's response to applicant's interrogatory number 6. The Board rejects this argument. Opposer's allegation of certain facts in its notice of opposition does not preclude opposer from establishing additional facts, on summary judgment, in support of its pleaded claim. Furthermore, as opposer correctly points out, applicant's interrogatory number 6 required opposer to identify all activities upon which opposer's priority claim is based, but expressly limited the time frame to activities prior to August 6, 1989. Opposer responded fully to that interrogatory. Opposer is not precluded from introducing evidence of its activities which took place after August 6, 1989, and the Board has considered that evidence.
FN11. The record on this issue includes the declarations submitted by applicant from persons involved in the "auto security" field. However, we find that these declarations fail to raise a genuine issue of material fact on the question for which they are offered, i.e., whether opposer's advertising and promotional activities were "merely an attempt to preempt a mark for use at an indefinite future date." These declarations purport to establish that it is not customary in opposer's industry to advertise products or services prior to their commercial availability. Applicant relies on this "industry custom" as the sole basis for its argument that opposer's advertising activities were merely an attempt to warehouse the mark. However, we agree with opposer that the declarations do not establish that the declarant companies are in the same industry as opposer. Nor do the declarations establish, or even claim, that there is an industry-wide practice of not advertising products or services prior to their commercial availability. Further, even if there were such an industry custom, the mere existence of that custom does not logically or legally preclude opposer from acting contrary to that custom. Nor would the mere existence of such a custom provide any foundation upon which a reasonable fact finder might base a conclusion that opposer's consistent and continuous use of TELETRAC in advertising its forthcoming services was merely an attempt to warehouse the mark for use at an indefinite future date.
FN12. Our finding that opposer has priority in its mark TELETRAC under the doctrine of analogous use also disposes of the three affirmative defenses pleaded by applicant in its answer. See supra at footnote 5.
FN13. Applicant's motion to compel discovery, filed May 26, 1993, is denied. According to opposer's letter dated September 29, 1993 and filed October 4, 1993, the parties have resolved their differences which led to the filing of the motion to compel. In any event, the motion to compel deals with discovery requests going to the issue of opposer's use of the designations "Stolen Vehicle Locator Service," "Corporate Vehicle Locator Service," "Corporate Fleet Locator Service," and "Emergency Alert Service." Because we have found that opposer's use of these designations does not detract from opposer's analogous use priority rights in the term TELETRAC, further discovery pertaining to opposer's use of those other designations is unnecessary.
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