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Relying on Licensee for SnoreMD

Posted by Thomas P. Howard | Nov 01, 2021 | 0 Comments

By James Juo.

Typically, a company owns its own trademarks; but sometimes a founder of the company will own the trademarks and the company uses the marks as a licensee. A court may recognize that “use of a mark by a licensee pursuant to a controlled licensing agreement is a use which may properly inure to a licensor/owner for purposes of trademark registration, even though the licensor may never have used the mark itself.” In re Raven Marine, Inc., 217 USPQ 68, 70 (TTAB 1983); Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). The license agreement may be oral or in writing; and may cover common law trademarks as well as registered trademarks. 

The recent case of James S. Fallon v. Brown Innovation, LLC, Opposition No. 91252488 (Oct. 29, 2021), before the Trademark Trial and Appeal Board (“TTAB”) is instructive.

Mr. James S. Fallon is the founder of Apnea Sciences Corporation, and has been its President and CEO since February 24, 2009. Apnea Sciences is in the business of manufacturing and distributing a variety of oral appliances, namely, therapeutic anti-snore mouth guards to be worn in the mouth; and has been selling certain anti-snore mouth guards under the SNOREMD trademark in interstate commerce since 2013.

Brown Innovations filed an intent-to-use application for the SNORE DOCTOR mark on September 20, 2018, to cover therapeutic mouthpieces for the prevention of snoring (with the word SNORE disclaimed).

Mr. Fallon filed a Notice of Opposition against Brown Innovation's SNORE DOCTOR mark, alleging a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with his common law SNOREMD trademark dating back to 2013.

For Mr. Fallon to prevail, he would have to rely on the use of SNOREMD trademark by his company, Apnea Sciences, as a licensee of the trademark. In his declaration submitted in the opposition, Mr. Fallon provided documents including Apnea Sciences invoices bearing dates between 2013 and 2018, product packaging, and online product descriptions and reviews, and averred:

The trademark SNOREMD was first adopted and used by James S. Fallon as an employee of Apnea Sciences Corporation. Apnea Sciences Corporation uses the SNOREMD trademark on and in connection with its anti-snore mouth guards pursuant to a license granted to it by James S. Fallon.

Mr. Fallon's testimony was uncontradicted, and the Board held that “an oral license may suffice,” and discussed the sufficiency of oral testimony in its footnote 7 of its precedential decision: 

Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use. Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 52 C.C.P.A. 950, 1965 Dec. Comm'r Pat. 163, 144 USPQ 430, 432 (CCPA 1965); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1931 (TTAB 2011). In this regard, the oral testimony should be clear, consistent, convincing, and uncontradicted. See National Blank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 827, 828 (TTAB 1993) (oral testimony may be sufficient to prove the first use of a party's mark when it is based on personal knowledge, it is clear and convincing, and it has not been contradicted); Liqwacon Corp. v. Browing-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when the testimony is proffered by a witness with knowledge of the facts and the testimony is clear, convincing, consistent, and sufficiently circumstantial to convince the Board of its probative value); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear, consistent, convincing, and uncontradicted).

“[A]lthough the record does not include a written license agreement, Opposer need not produce one to establish that a license between the parties exists because an oral license may suffice.” Raven Marine, 217 USPQ at 70 (“[I]t is also clear that controlled licensing agreements may be recognized whether oral or written in form . . . .”). The Board found “Mr. Fallon's testimony and the evidence of record sufficient to establish the existence of Opposer's prior common law rights in the SNOREMD mark.“

Thus, the Board concluded that Mr. Fallon “has established priority as to his use of the SNOREMD trademark with anti–snore mouth guards” since 2013 against the later 2018 constructive use date of Brown Innovation's SNORE DOCTOR mark. The Board further held that, “[w]hen viewed in the context of the marks and goods at issue in this case, the terms “DOCTOR” and “MD” in the respective marks have highly similar meanings and commercial impressions”; and sustained the opposition based on a likelihood of confusion.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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