Two dental practices were the parties to a recent trademark opposition proceeding.

Background.  In Timber Dental LLC v. Tooth LLC, the Applicant “Tooth” filed a trademark application for DENTISTRY DONE DIFFERENTLY for dentist services in International Class 44.   The Applicant had to disclaim the term “”dentistry” separate and apart from the mark as shown.  The Opposer, Timber Dental filed a trademark opposition claiming  common law rights in and to the identical mark DENTISTRY DONE DIFFERENTLY.  By claiming unregistered trademark rights, the burden was on the Opposer to show two things:  priority and likelihood of confusion.

Burden of proof.  To establish priority rights, the Opposer may rely on its own trademark registration.  Alternatively, it can rely on actual use, or use analogous to trademark use.  In all instances, the Applicant has the burden to prove that its registration or use predates the first use of the Applicant.   Here, since the Opposer had to rely on its claim of priority based on common law use of the mark or use analogous to trademark use.   In doing so, the Opposer could rely on advertising brochures, catalogues, websites, or other marketing materials.  Such materials would have to support a finding that the public associates the trademark as a source indicator of the Opposer.  Moreover, a party that relies on common law priority must also establish that the mark is distinctive.

Result.  The Applicant ‘s date of first use was November 2016.  Opposer’s witness testified that its date of first use of the mark DENTISTRY DONE DIFFERENTLY dated back to the date the practice opened.  This was 2014.   Unfortunately, the advertising evidence that the Opposer introduced in support of its first use date was not use of the mark in question but rather “Family Dentistry Done Differently.”  The Board concluded that the Applicant’s mark was not the same as the Opposer’s mark.  The Opposer never amended its Notice of Opposition to allege a likelihood of confusion with FAMILY DENTISTRY DONE DIFFERENTLY.  Accordingly, the Board had no choice but to rule in favor of Applicant and dismiss the Opposition.

Attorney’s Note.  If uncorrected, procedural errors can be fatal in trademark opposition proceedings.  Examples include relying on the wrong mark, or failing to plead a proper cause of action.