Blast Blow Dry Bar LLCv.Blown Away LLC d/b/a Blast Blow Dry Bar

Trademark Trial and Appeal Board

Jan 2, 2014

No. 91204769 (T.T.A.B. Jan. 2, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Blast Blow Dry Bar LLC

v.

Blown Away LLC d/b/a Blast Blow Dry Bar
___

Opposition No. 91204769
to Application Serial No. 85492298
___

Clark Richards and Paul Skeith of Richards Rodriguez & Skeith, LLP for Blast
Blow Dry Bar LLC.

Kenneth L. Kunkle of Kunkle Law PLC for Blown Away LLC d/b/a Blast Blow Dry
Bar.
______

Before Kuhlke, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

On December 10, 2011 applicant Blown Away LLC d/b/a Blast Blow Dry Bar
(“applicant”) filed an application to register the mark shown below

Opposition No. 91204769

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with BLOW DRY BAR disclaimed, for “Hair salon services; Hair styling; Providing
on-site beauty services, namely, hair styling and make-up application services.”1 In
its amended notice of opposition, Blast Blow Dry Bar LLC (“opposer”) alleges use of
BLAST BLOW DRY for identical services, and that prior to applicant’s filing date
opposer acquired the domain name “blastblowdry.com,” organized as a limited
liability company with the State of Texas, obtained a logo, business cards and fire
permit and provided complimentary services for promotional purposes (collectively
“Opposer’s Prior Activities”). Amended Notice of Opposition ¶¶ 2-10. Opposer also
pleads ownership of a later-filed application to register BLAST BLOW DRY, in
standard characters and with BLOW DRY disclaimed, for services identical to those
identified in applicant’s involved application.2 As grounds for opposition, opposer
alleges that use of applicant’s mark would be likely to cause confusion with
opposer’s mark.
In its answer, applicant denies the salient allegations in the amended notice
of opposition and asserts, as an affirmative defense, that opposer’s claims “are
barred under the doctrine of unclean hands” by virtue of opposer’s filing of its
pleaded, subsequent application. Applicant also asserts, under the heading
“Affirmative Defenses,” that to the extent that Opposer’s Prior Activities are

1 Application Serial No. 85492298, alleging an intent to use the mark in commerce
under Section 1(b) of the Act. The application includes the following description of the
mark: “The mark consists of the words ‘blåst blow dry bar’, the word blast includes the
Swedish letter ‘a’ with a diacritic circle above it.” The application also includes the
following translation statement: “The English translation of ‘blåst’ in the mark is ‘blown.’”
2 Application Serial No. 85510853, filed January 6, 2012, alleging first use dates of
November 21, 2011.
Opposition No. 91204769

3

sufficient to confer priority on opposer, applicant “has similar usage of [its] mark,”
earlier than both the filing date of applicant’s involved application and most of
Opposer’s Prior Activities.3
The Record
On May 22, 2013, the parties filed a Procedural Stipulation (TTABVue
Docket # 11), pursuant to which they agreed, inter alia, to submit testimony by
affidavit and to waive “[f]ormal or procedural objections” thereto (but reserved the
right to object “based on relevancy, materiality, and, competency”). Also on May 22,
2013, the parties filed a Factual Stipulation (TTABVue Docket # 10), pursuant to
which they stipulated to certain facts and authenticated and introduced into
evidence certain documents.4 As a result of the parties’ stipulations and filings, and
by rule, the record consists of:
• the pleadings;

• the file of the involved application;

• applicant’s notice of reliance (“NOR”) on opposer’s
pleaded application and opposer’s responses to applicant’s
interrogatories (TTABVue Docket No. 9);

• documents submitted with the Factual Stipulation,
including opposer’s 2011 federal tax return, opposer’s
records of payments received for salon services in 2011,
opposer’s assumed name filing with the Texas Secretary
of State and opposer’s “craigslist.org” want ad seeking
hair stylists;

3 This “defense” is in fact merely an amplification of applicant’s denial of the priority
allegations in the notice of opposition. Compare TBMP § 311.02(b) (3d ed. rev.2 2013) with
TBMP § 311.02(d).
4 The parties are commended for their stipulations, which greatly simplified the
presentation of evidence and resulted in an appropriately focused record.
Opposition No. 91204769

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• the Affidavit of Heidi Brownlee (“Brownlee Aff.”),
applicant’s co-owner, and document attached thereto
(TTABVue No. 11); and

• the Affidavit of Venus Rouhani (“Rouhani Aff.”),
opposer’s co-owner, and documents attached thereto
(TTABVue No. 12).

Both parties filed briefs.

Facts
Opposer is an Austin, Texas hair salon which provides “wash and blow dry
services,” but not “hair cut or hair color services.” Rouhani Aff. ¶ 2. Opposer’s Prior
Activities undertaken in the summer and fall of 2011 include the following
preparations to do business:
• opposer registered the domain name
“blastblowdry.com” on August 30, 2011 (but its website
and Facebook page were not publicly available until
December 30, 2011 and opposer’s initial blog posting was
not until February 22, 2012); id. ¶¶ 3, 15; Factual
Stipulation ¶ 1;

• opposer was formed as a limited liability company
on August 31, 2011; Rouhani Aff. ¶ 4 and Ex. A;

• opposer entered into a lease agreement for its place
of business on October 13, 2011 and on November 1, 2011
had business cards and postcards printed bearing the
name BLAST BLOW DRY; id. ¶¶ 5, 7 and Exs. B, C;

• opposer placed a want ad seeking hair stylists on
November 11, 2011, passed out business cards to City of
Austin employees when obtaining a fire permit on
November 21, 20115 and trained employees during
November 2011; id. ¶¶ 8, 9; Factual Stipulation Ex. S-4;

5 Applicant’s hearsay objection to Ms. Rouhani’s testimony about the distribution of
business cards to Austin employees is overruled. The testimony does not include an out of
court statement and in Paragraph 1 of her affidavit, Ms. Rouhani testifies that “[t]he facts
Opposition No. 91204769

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• on December 5, 2011, opposer placed a banner “on
its retail store location” which stated “Blast Blow Dry,
Opening December 15th;” Rouhani Aff. ¶ 11;

• opposer distributed promotional materials bearing
the mark BLAST BLOW DRY door-to-door in Austin
between December 10, 2011 and January 6, 2012; id. ¶
14; and

• opposer sought an assumed name certificate for
“Blast Blow Dry” which issued on January 30, 2012;
Factual Stipulation ¶ 4 and Ex. S-3.

In addition, one of Opposer’s Prior Activities was an agreement with Sikara
Jewelry, pursuant to which opposer, on December 8, 2011, provided hair styling
services at Sikara’s holiday party. Specifically, opposer provided its services
without charge to four of Sikara’s customers,6 with opposer’s stylists wearing
clothing bearing the name BLAST BLOW DRY and distributing promotional
materials during the event. Rouhani Aff. ¶¶ 10, 12.7 Opposer provided additional
complimentary services at its place of business to prospective clients on December
28, 2011. Id. ¶ 17. Opposer did not receive payment for salon services until
December 31, 2011. Factual Stipulation ¶ 3 and Ex. S-2.
Applicant is a North Oaks, Minnesota hair salon which does business as
BLAST BLOW DRY BAR, and provides “blow-dry and hair care services.” Brownlee

stated in this affidavit are within my personal knowledge,” which, coupled with the
foundation laid about her role with opposer and relationship to Jinous Rouhani is sufficient.
6 Sikara’s owner and two of Sikara’s employees were also present at the event.
7 Applicant’s hearsay objection to the December 8, (not December 1) 2011 e-mail from
Sikara’s Mousemi Shaw, attached to the Rouhani Affidavit as Exhibit D, is sustained. The
e-mail, as opposed to Ms. Rouhani’s testimony about the event, has been given no
consideration.
Opposition No. 91204769

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Aff. ¶¶ 2, 4. Prior to the December 10, 2011 filing date of its involved application,
applicant, like opposer, engaged in preparations to do business, as follows:
• applicant organized as a Minnesota limited liability
company on November 4, 2011; id. Ex. D-1;

• Ms. Brownlee agreed to host a tennis program’s
annual holiday party and on December 8, 2011 applicant
promoted its services at the event, which was attended by
approximately 20 people not affiliated with applicant;
during the event applicant demonstrated its “blow out”
technique on one of applicant’s co-owners, and applicant’s
“logo was on hand on a hard poster and on various
promotional items distributed to attendees;” id. ¶¶ 7-8;
and

• applicant registered the domain name
“blastdrybar.com” on December 9, 2011 (but the site was
not “first used” until February 13, 2012). Factual
Stipulation ¶ 1.

Standing
Opposer has established that at the time it filed its original notice of
opposition, it was using BLAST BLOW DRY for wash and blow dry services.
Rouhani Aff. ¶¶ 2, 10, 12, 17; Factual Stipulation ¶ 3 and Ex. S-2. Accordingly,
opposer has standing. Automedx, Inc. v. Artivent Corp., 95 USPQ2d 1976, 1978
(TTAB 2010); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB
2009) (“Petitioner has established his common-law rights in the mark
DESIGNED2SELL, and has thereby established his standing to bring this
proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118
(TTAB 2009) (testimony that opposer uses its mark “is sufficient to support
Opposition No. 91204769

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opposer’s allegations of a reasonable belief that it would be damaged …” where
opposer alleged likelihood of confusion).
Likelihood of Confusion
This case is in essence a priority dispute. Indeed, there can be little doubt
that there is a likelihood of confusion.
The parties’ services are identical, at least in part. This not only weighs
heavily in favor of a finding of likelihood of confusion, but also reduces the degree of
similarity of the marks necessary to find a likelihood of confusion. In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
The parties’ marks are highly similar in any event, with the only differences
between them being that applicant’s mark includes the descriptive and disclaimed
word BAR and the diacritic circle above the “a” in BLAST, and is presented in a
stylized format. These minor distinctions are not enough to prevent confusion when
the parties’ marks are used on identical services. Descriptive and disclaimed words
such as BAR are entitled to less weight in our analysis of the similarity of the
parties’ marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re
Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Opposition No. 91204769

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Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word
ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). The diacritic circle
is nothing more than a minor feature of applicant’s mark which does not
meaningfully change its appearance, nor does it change the mark’s likely
pronunciation by English speaking American consumers or the mark’s meaning.
Furthermore, the first three words of the parties’ marks are essentially identical,
further increasing the likelihood of confusion. See Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers will first notice the identical lead
word).
In the absence of any evidence of record which weighs against a finding of
likelihood of confusion, and given the identical services and highly similar marks,
we have no difficulty finding that there is a likelihood of confusion between the
parties’ marks. The question, therefore, is whether opposer can establish priority.
Opposition No. 91204769

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Priority
“To establish priority, [opposer] must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko International, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA
1981).8 Here, applicant may rely on the filing date of its involved application,
December 10, 2011, and we must therefore determine whether opposer can
establish proprietary rights in its pleaded mark before that date. Cent. Garden &
Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013) (“for when an
application or registration is of record, the party may rely on the filing date of the

8 To establish that it has proprietary rights in the mark, opposer must establish that
BLAST BLOW DRY “is distinctive of its [services] either inherently or through the
acquisition of secondary meaning.” Hoover Co. v. Royal Appliance Manufacturing Co., 238
F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001); Otto Roth & Co., Inc. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (discussing requirements of inherent
distinctiveness). While it seems clear that BLOW DRY is merely descriptive under Section
2(e)(1) of the Act, and there is no evidence that it has acquired distinctiveness, by the same
token there is no evidence that BLAST is anything other than inherently distinctive, and
applicant, which has disclaimed all elements of its mark other than the word BLÅST, does
not argue to the contrary. Accordingly, we find that BLAST BLOW DRY is as a whole
inherently distinctive, even if BLOW DRY by itself is not. See, e.g., Giersch, 90 USPQ2d at
1023 (“Respondent has not raised an issue as to the distinctiveness of petitioner's mark or
otherwise put petitioner on notice of this defense, and therefore we find that the mark is
distinctive.”) (citing Wet Seal Inc v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007)
(absent argument or evidence from applicant, opposer's mark deemed distinctive)); Chicago
Corp. v. N. Am. Chicago Corp., 20 USPQ2d 1715, 1717 n. 5 (TTAB 1991)(rejecting
applicant's argument that opposer failed to prove that its mark was distinctive where
applicant failed to plead the issue or introduce evidence of non-distinctiveness).

Opposition No. 91204769

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application for registration, i.e., its constructive use date”); Syngenta, 90 USPQ2d at
1119 (“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority”).
Opposer claims rights in the service mark BLAST BLOW DRY by virtue of
use and use analogous to service mark use. Turning first to the claim of actual
use, “[f]or service marks, the ‘use in commerce’ requirement is met when (1) a mark
is ‘used or displayed in the sale or advertising of services’ and (2) either (i) the
services are ‘rendered in commerce’ or (ii) the services are ‘rendered in more than
one State or in the United States and a foreign country and the person rendering
those services is engaged in commerce in connection with the services.’” Aycock
Engineering Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir.
2009) (citing 15 U.S.C. § 1127).
Here, opposer used its mark on the “Blast Blow Dry, Opening December
15th” banner to advertise its services, starting on December 5, 2011, and opposer
first rendered hair styling services on December 8, 2011, when it provided these
services free of charge to four Sikara Jewelry customers. While applicant
characterizes the Sikara services not as service mark use, but instead, at best, as
use analogous to service mark use, we disagree. In fact, opposer provided hair
styling services at the Sikara event and this, coupled with opposer’s earlier and
simultaneous advertising of its services under the mark, constitutes “use in
commerce,” notwithstanding that the services were provided free of charge.
American Express Marketing & Development Corp. v. Gilad Development Corp., 94
Opposition No. 91204769

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USPQ2d 1294, 1298 n.3 (TTAB 2010) (“… use of marks in conjunction with the
rendering of free services still constitutes a ‘use in commerce’ under the Trademark
Act. In other words, a for profit sale is not required.”); Capital Speakers Inc. v.
Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB
1996); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 n. 6 (TTAB 1989)
(finding that goods need not be sold “in order to come within the ambit of the
statute”); Tiberghien Freres S.A. v. Miguel Gil, S.A., 185 USPQ 183, 184 (TTAB
1974).
While the services were rendered to only four customers, which in some
cases, depending upon the circumstances, may be too limited to establish “use,” in
this case we have taken into account the low cost and limited nature of the parties’
hair styling services, and the local nature of the parties’ businesses, which currently
operate in single locations. We note also that only three weeks after opposer
provided complimentary services at the Sikara event, it was paid for services
rendered to a larger number of customers at opposer’s place of business, and that
opposer’s use continued thereafter. Factual Stipulation ¶ 3 and Ex. S-2; Rouhani
Aff. ¶ 17. See E.I. du Pont de Nemours and Co. v. Big Bear Stores, Inc., 161 USPQ
50, 51 (TTAB 1969) (test marketing and a small volume of sales established use);
see also, E.I. du Pont de Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807, 812
(TTAB 1978).9

9 The legislative history to the Trademark Law Revision Act of 1988 is also relevant
here:
Opposition No. 91204769

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As for opposer’s claim of use analogous to service mark use, specifically raised
for the first time in Opposer’s Trial Brief at pages 6-7, applicant argues that it “is
beyond the pleading in this case and [has] not been fully tried.” Applicant’s Trial
Brief at 8. Applicant is correct that claims of use analogous to service mark use
must be pleaded, Cent. Garden & Pet Co.,, 108 USPQ2d at 1142, and that opposer
did not explicitly plead use analogous to service mark use in its amended notice of
opposition. However, we find that the issue was tried by implied consent under
Fed. R. Civ. P. 15(b)(2). The vast majority of opposer’s amended notice of opposition
is devoted to opposer’s claim of priority, not based on claims of actual service mark
use, but instead based on Opposer’s Prior Activities most of which are in the nature
of use analogous to service mark use rather than actual service mark use. And in
its answer to the amended notice of opposition, applicant asserts, as an “affirmative
defense,” that to the extent Opposer’s Prior Activities confer priority on opposer,
applicant has “similar usage of its mark,” i.e. its own use analogous to service mark
use, and applicant goes on to specify those usages in its pleading, just as opposer
did by specifying Opposer’s Prior Activities in its pleading. More importantly, much

The committee intends that the revised definition of “use in
commerce” be interpreted to mean commercial use which is
typical in a particular industry. Additionally, the definition
should be interpreted with flexibility so as to encompass
various genuine, but less traditional, trademark uses, such as
those made in test markets, infrequent sales of large or
expensive items, or ongoing shipments of a new drug to clinical
investigators by a company awaiting FDA approval, and to
preserve ownership rights in a mark if, absent an intent to
abandon, use of a mark is interrupted due to special
circumstances.
S. Rep. No. 100-515, pp. 44-45 (Sept. 15, 1988).
Opposition No. 91204769

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of the evidence of Opposer’s Prior Activities was introduced by way of the parties’
Factual Stipulation, to which applicant obviously did not object.10 In other words,
applicant was “fairly apprised that the evidence was being offered in support of the
issue” by way of the amended notice of opposition and Factual Stipulation, and
“raised no objection to the introduction of evidence on the issue,” instead stipulating
thereto. TBMP § 507.03(b).11
“Of course, an applicant or registrant involved in an inter partes proceeding
before the Board may himself rely upon use analogous to trademark or service mark
use to the extent that he may tack such use on to his technical trademark or service
mark use for purposes of determining priority.” In re Cedar Point, Inc., 220 USPQ
533, 537 (TTAB 1983). Here, we find that applicant may also rely on its own claim
of use analogous to service mark use for the same reasons that opposer is entitled to
do so. Answer to Amended Notice of Opposition ¶ 15; Factual Stipulation ¶ 1.
As for whether either party can prove its claim of use analogous to service
mark use, we must consider the extent to which their activities impacted the public.

10 The Factual Stipulation also includes evidence of applicant’s similar activities, as
raised in the “affirmative defense” that applicant has “similar usage.” Factual Stipulation
¶ 1.
11 While applicant objected to consideration of the issue for the first time in its brief,
that was too late under the circumstances of this case, where the trial was effectively
conducted by stipulation and opposer’s evidence of use analogous to service mark use was
introduced via the parties’ Factual Stipulation. In other words, having agreed in the
preamble of the Factual Stipulation to “not contest” the evidence introduced thereby,
applicant could not fairly change its mind and object to that evidence after the trial was
over and after opposer relied on applicant’s agreement to not contest the evidence. We also
note that whereas the parties reserved in the Procedural Stipulation the right to object on
certain grounds to the affidavit testimony, they did not include any such reservation in the
Factual Stipulation which contained much of the evidence relating to opposer’s claim of use
analogous to service mark use.
Opposition No. 91204769

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Before a prior use becomes an analogous use sufficient to
create proprietary rights, the petitioner must show prior
use sufficient to create an association in the minds of the
purchasing public between the mark and the petitioner’s
goods … A showing of analogous use does not require
direct proof of an association in the public mind …
Nevertheless, the activities claimed to create such an
association must reasonably be expected to have a
substantial impact on the purchasing public before a later
user acquires proprietary rights in a mark ….

Herbko International, 308 F.3d at 1156, 64 USPQ2d at 1378; T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996). In addition, we
must weigh the evidence on use analogous to service mark use as a whole, rather
than considering each piece of evidence in isolation. West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“However,
whether a particular piece of evidence by itself establishes prior use is not
necessarily dispositive as to whether a party has established prior use by a
preponderance. Rather one should look at the evidence as a whole, as if each piece
of evidence were part of a puzzle which, when fitted together, establishes prior
use.”). Under these standards, we find based on the record herein that neither
party may rely on use analogous to service mark use because the evidence of record
regarding the parties’ earlier activities, considered as a whole, does not establish
that those activities had a “substantial impact on the purchasing public.”
The parties’ mere registration of their marks as domain names is not enough
to establish service mark use or use analogous to service mark use where neither
party operated an active website accessible through its domain name. See
Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036
Opposition No. 91204769

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50 USPQ2d 1545, 1555 (9th Cir. 1999). Nor was the mere formation of limited
liability companies using the names BLAST BLOW DRY or BLAST BLOW DRY
BAR sufficient; rather, only uses of the names or marks or uses analogous to service
mark use “directed to customers or to potential customers” would be enough to
confer prior rights. See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203
USPQ 305, 309, 316 (TTAB 1979). Opposer’s lease is a “private agreement” and
does not constitute “public use” of the mark. Computer Food Stores Inc. v. Corner
Store Franchises, Inc., 176 USPQ 535, 539 (TTAB 1973). As for opposer’s
distribution of business cards and promotional materials, there is no evidence
regarding how many customers or potential customers were reached via these
efforts, and applicant’s promotional efforts at the tennis program’s small holiday
party did not reach a sufficient number of people. As for opposer’s banner, while it
may very well have had the requisite impact on the purchasing public, we are not
able to determine that from the record. The photograph of the banner included with
the Rouhani Affidavit does not show how the banner appeared “on” opposer’s retail
store, as Ms. Rouhani testified, but instead merely shows an individual holding the
banner, apparently inside rather than outside of opposer’s place of business.
Rouhani Aff. Ex. E. Moreover, opposer’s address is “3800 North Lamar Boulevard,
Suite 750,” suggesting that opposer’s store may be on the 7th floor or otherwise not
on street level, and there is simply no way for us to determine, even by inference,
how many passersby were likely to view the banner when it was “on” opposer’s
store.
Opposition No. 91204769

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Considered as a whole, the parties’ evidence falls short for the same reason.
That is, even where the parties made open use of their names or marks, such as
through a banner “on” opposer’s store or through promotional appearances at
events, there is simply no evidence that these efforts reached a sufficient number of
people, and we therefore cannot determine whether the parties’ efforts had an
impact, much less a “substantial impact,” on the purchasing public. See, T.A.B.
Systems, 77 F.3d at 1372, 37 USPQ2d at 1882-84 (“Nor can there be any doubt that
purchaser perception must involve more than an insubstantial number of potential
customers. For example, if the potential market for a given service were 10,000
persons, then advertising shown to have reached only 20 or 30 people as a matter of
law could not suffice.”); Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1219
(TTAB 2007). Accordingly, we find that neither party has established use
analogous to service mark use.
That brings us back to opposer’s actual rendering of hair styling services at
the December 8, 2011 event. While applicant also participated in a promotional
event on the same date, applicant did not couple its promotional efforts at the event
with the actual rendering of the involved services to potential customers. By
contrast, opposer both promoted its services and actually rendered them in
commerce to potential customers. That distinction is sufficient, under the facts of
this case, for us to find that opposer established actual trademark use on December
8, 2011, while applicant’s purely promotional efforts before a small group of people
were insufficient to establish either actual service mark use or use analogous to
Opposition No. 91204769

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service mark use, leaving applicant to rely on the subsequent December 10, 2011
filing date of its involved application. Accordingly, opposer has established both
priority of use and likelihood of confusion.12

Decision: The opposition is sustained and registration of applicant’s mark
is refused under Section 2(d) of the Trademark Act.

12 Applicant argues in its brief that opposer has “unclean hands.” While the basis for
this defense is not entirely clear, applicant’s position appears to be that it was improper for
opposer to file its own application after being informed, in January 2012, about applicant’s
involved application, because opposer’s application asserted a first use date of November
21, 2011 and identified services identical to those identified in applicant’s application.
Applicant’s Trial Brief at 12-13. We fail to see how this was improper or why it constitutes
unclean hands. Moreover, while we do not find herein that opposer established use in
commerce prior to December 8, 2011, that does not mean that opposer filed its application
in anything other than good faith. In any event, our decision herein is not based on
opposer’s application or any information contained therein.