Hearing: Mailed: June 29, 2004
March 23, 2004 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
M.C.A. – Medical and Chemical Agency s.r.l.
v.
Zenna Chemical Industry Co. Ltd.
_____
Opposition No. 91100786
to application Serial No. 74598262
filed on November 14, 1994
_____
Zenna Chemical Industry Co. Ltd.
v.
M.C.A. – Medical and Chemical Agency s.r.l. and
M.C.A. – Medical and Chemical Agency S.p.a.
(joined as a party defendant)1
_____
Opposition No. 91104047
to application Serial No. 75056059
filed on February 9, 1996
_____
Frank P. Presta and Sheryl L. Sharmach of Nixon & Vanderhye
P.C. for M.C.A. – Medical and Chemical Agency s.r.l.
Scott R. Hansen of Fulwider Patton Lee & Utecht, LLP for
Zenna Chemical Industry Co. Ltd.
1 As noted in the Board’s April 16, 2003 order, joinder is
appropriate in Opposition No 91104047 in view of the assignment
of application Serial No. 75056059 involved therein. However,
inasmuch as M.C.A. – Medical and Chemical Agency, s.r.l. relies
solely on its common law rights in support of its claim in
Opposition No. 91100786, joinder of M.C.A. – Medical and Chemical
Agency, S.p.A. as a party plaintiff in that proceeding is
inappropriate.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition Nos. 91100786 and 91104047
2
______
Before Hairston, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
In these consolidated proceedings, M.C.A. Medical and
Chemical Agency s.r.l. (hereinafter M.C.A.) (an Italian
corporation) has opposed the application of Zenna Chemical
Industry Co., Ltd. (hereinafter Zenna)(a Taiwanese
corporation) to register the mark shown below,
for “skin cleansing milk, skin cleansing crème, foundation
powder and face cream.â€2
In the notice of opposition, M.C.A. alleges that it has
marketed and sold skin care products in the United States
under the marks TOP-GEL and MCA since prior to applicant’s
alleged date of first use; that as a result of widespread
use, these marks have become distinctive of M.C.A.’s goods;
and that Zenna’s mark TOP-GEL MCA, as applied to Zenna’s
2 Serial No. 74598262 filed November 14, 1994, alleging a date of
first use and a date of first use in commerce of January 15,
1990.
Opposition Nos. 91100786 and 91104047
3
goods, so resembles M.C.A.’s previously used marks TOP-GEL
and MCA, as to be likely to cause confusion. Zenna, in its
answer, denied the salient allegations of the notice of
opposition.
Zenna, in turn, has opposed the application of M.C.A.
to register the mark MCA shown below,
for skin care products, namely, skin cream and soap.3 In
the notice of opposition, Zenna alleges that it is the owner
of application Serial No. 75069943 for the mark MCA shown
below,
for “cosmetics, namely body cream, cold cream, eye cream,
face cream, skin cleansing cream, skin cleansing lotion,
3 Serial No. 75056059 filed February 9, 1996; alleging a date of
first use of February 8, 1988 and a date of first use in commerce
with the United States of February 20, 1989.
Opposition Nos. 91100786 and 91104047
4
medicated skin cream, and vanishing cream, foundation
makeup, talcum powder, toilet soap, liquid soap for hands,
face and body, perfume, lipstick, [and] lip pomadesâ€;4 that
the United States Patent and Trademark Office may reject its
application in view of M.C.A.’s application; and that Zenna
has continuously used its mark since prior to M.C.A.’s
alleged date of first use of February 20, 1989. M.C.A., in
its answer, admits that Zenna is the owner of application
Serial No. 75069943; admits that the United States Patent
and Trademark Office may reject Zenna’s application, but
denies that Zenna has used its mark prior to M.C.A.’s
claimed date of first use. Further, as “affirmative
defenses,†M.C.A. asserts that it has amended its
application Serial No. 75056059 to state “the correct†date
of first use and date of first use in commerce which is
April 10, 1987, and that this date is earlier than any date
of first use in commerce on which Zenna may rely.
The record consists of the testimony (with cross-
examination) upon written questions of M.C.A.’s sales
manager Rinaldo Rescigno (with exhibits); the testimony
4 Serial No. 75069943 was filed March 11, 1996; alleging a date
of first use and a date of first use in commerce of January 15,
1990.
Opposition Nos. 91100786 and 91104047
5
depositions of Zenna’s witnesses Su Chin Lin Shen5; Kenneth
Wong; and K.A. Lin (all with exhibits); and both parties’
responses and supplemental responses to discovery requests
submitted by notices of reliance.
Both parties filed briefs and reply briefs. An oral
hearing was held on March 23, 2004.
At the outset, we note that there is no dispute as to
likelihood of confusion. In this regard, M.C.A., in its
main brief, states that the issue in these consolidated
proceedings is “[w]hether M.C.A. has priority of use of the
marks MCA & Design and TOP-GEL over Zenna in the United
States. There is no question that there is a likelihood of
confusion as the marks and the goods are substantially
identical.†(M.C.A.’s Brief, p. 5). Similarly, Zenna, in
its main brief, states that the issue is “[w]hether Zenna
has priority of commercial use of the marks MCA & design and
TOP-GEL over M.C.A. in the United States.†(Zenna’s Brief,
p. 3). Further, Zenna states “[t]he marks and goods
involved in the proceedings are substantially identical.
Consequently, the determinative issue is priority of use.â€
(Zenna’s Brief, p. 7).
5 The Board notes M.C.A.’s contention in its brief that Ms.
Shen’s testimony deposition has been previously struck by the
Board’s order of May 23, 2002. The Board struck the testimony
deposition transcript because it was unsigned. However, as noted
in a subsequent Board order of April 16, 2003, the Board’s May
23, 2002 order did not preclude Zenna from refiling Mrs. Shen’s
signed testimony deposition transcript which Zenna has done.
Opposition Nos. 91100786 and 91104047
6
In view of the foregoing, we find that the parties have
conceded that there is a likelihood of confusion. Thus, the
issue to be determined in these proceedings is priority.
Another related matter to be ruled on in is M.C.A.’s motion
to amend its application Serial No. 75056059 to assert new
dates of first use prior to the ones set forth in the
application. Action on this motion was deferred until final
decision.6
M.C.A.
In support of its claim of priority, M.C.A. took the
testimony upon written questions of its sales manager
Rinaldo Rescigno. According to Mr. Rescigno, M.C.A. has
been doing business under the name M.C.A. – Medical and
Chemical Agency since 1976. M.C.A. manufactures
pharmaceutical and cosmetic products for skin care. Mr.
Rescigno testified that M.C.A. first used the MCA name and
the MCA mark in 1976. All of M.C.A.’s products bear the MCA
mark. The mark was chosen because it represents the
initials of the wives of the founding partners of the
company. Mr. Rescigno testified that M.C.A. first used the
MCA mark in the United States in March 1986 on skin cream
6 We note that in its amendment M.C.A. alleges April 10, 1987 as
its date of first use and date of first use in commerce. In its
supplemental responses to Zenna’s interrogatories, M.C.A. states
that it first sold products bearing the marks MCA and TOP-GEL in
the United States in March 1986,and it is this date that M.C.A.
seeks to prove for priority purposes.
Opposition Nos. 91100786 and 91104047
7
and has continuously used the mark in the United States
since that date. According to Mr. Rescigno, M.C.A. always
uses the MCA mark with the TOP-GEL mark in close proximity.
M.C.A. first used the mark TOP-GEL on skin care products in
the United States in March 1986. M.C.A. has continuously
used the TOP-GEL mark on its products. M.C.A. manufacturers
the products at its laboratories in Italy and the goods are
shipped from Italy to one of M.C.A.’s distributors in the
United States. M.C.A. first advertised and promoted the
marks MCA and TOP-GEL in the United States through its
distributor Homeboys Discount in early 1986. Mr. Rescigno
testified that M.C.A. first shipped goods bearing the marks
MCA and TOP-GEL to the United States in March 1986.
M.C.A.’s distributors sell the products to retail stores and
other wholesalers in the United States. The products are
sold at retail locations such as beauty stores, discount
stores, supermarkets, ethnic specialty shops and grocery
stores. The primary customers of the products are persons
of African descent and the products retail for approximately
$3-5.00.
M.C.A. coordinates the marketing of its products
through distributors, promoting goods bearing the marks MCA
and TOP-GEL in the United States through advertisements
placed in newspapers and magazines, at trade fairs,
exhibitions and on the Internet. M.C.A. spends
Opposition Nos. 91100786 and 91104047
8
approximately $40,000 to $200,000 per year for promotional
purposes internationally. Since March 1986 M.C.A. has had
sales of products bearing the marks MCA and TOP-GEL in the
United States of approximately $700,000 corresponding to
approximately 1,400,000 units.
According to Mr. Rescigno, M.C.A. became aware of
Zenna’s use of the marks MCA and TOP-GEL after receiving
complaints from customers that the products they were using
were ineffective, despite the fact that such products bore
the marks MCA and TOP-GEL. Further, Mr. Rescigno testified
that M.C.A. has received complaints from its distributors
that the distributors believed that M.C.A. was selling its
goods to third parties, not realizing that the products of
which they were complaining had not been manufactured or
distributed by M.C.A., but rather by Zenna.
M.C.A. introduced a number of exhibits during the
course of Mr. Rescigno’s deposition. Exhibit A consists of
an invoice dated March 19, 1986 from M.C.A. to Homeboys
Discount for 1200 tubes of the TOP-GEL product at a
wholesale cost of $1,800. This invoice bears a date stamp
of March 21, 1986. The invoice is supported by an air
waybill for the same goods dated March 21, 1986. Exhibit B
is an invoice dated May 23, 1986 also to Homeboys Discount
for 1800 tubes of TOP-GEL, having a total cost of $2,700.
This invoice has an accompanying air waybill corresponding
Opposition Nos. 91100786 and 91104047
9
to this shipment. Exhibit C is an invoice dated July 10,
1986 to Homeboys Discount for 1200 tubes of TOP-GEL totaling
$1,700 and includes an air waybill for the same goods.
Additional representative invoices for the period of 1987 to
1999 from M.C.A. to Homeboys Discount and other distributors
were introduced. Also introduced was sample packaging for
M.C.A.’s products which shows the marks MCA and TOP-GEL
thereon.
Zenna
Zenna, in support of its priority claim, took the
testimony of three witnesses. Zenna first took the
testimony of Ken Wong, owner of Asia Company, which is a
wholesaler and import/export company located in San
Francisco, California. Mr. Wong testified that he first saw
Zenna’s TOP-GEL MCA products in Taiwan “around†1984 and
purchased a small trial order of TOP-GEL MCA face cream from
Zenna “around†1985. (Dep. at 16-17). Mr. Wong sold the
products to several retailers in the San Jose area.
According to Mr. Wong, Asia Company has continued to order
TOP-GEL MCA products from Zenna and has sold these products
to distributors in California, Mexico and Canada. Further,
Mr. Wong testified that his company has sold “many products
with [the] MCA logo…†and that it has done so “[s]ince 1985
to now.†(Dep. at 19). As evidence of use of the mark TOP
GEL MCA in 1985, Mr. Wong identified an invoice from his
Opposition Nos. 91100786 and 91104047
10
company’s records dated June 16, 1985 from Zenna to Asia
Company for products described as “TOP GEM MCA Extra Pearl
Cream†and “TOP GEM MCA Cleansing Foam.â€7 Mr. Wong
testified that Asia Company generally retains documents for
5-6 years, and he offered the following explanation as to
how the invoice, which was older than five years, was found:
A. I will repeat it again. Because I told all of
my employees to look for any documents or invoices
that related to Zenna, one day we find this old
cabinet that was long time ago. We did not use the
cabinet anymore. It was an old cabinet. That
cabinet was not supposed to store all of the
documents for all of the import goods. And one
day the employee was looking for something, a
document, to order some new printing or documents,
for the printing press. And she find – the
employee find this document among the invoice,
among those documents. Among those documents,
we find this invoice. It was an accident.
Q. What other supporting documents would normally
be found? With that invoice what would you
find?
A. Yes, it should come with other supporting
documents.
Q. What kind of documents?
A. Packing list, bill of lading.
Q. Are there any customs documents?
A. We did not find that. It should have the bill
of lading, packing list, and also a form from the
FDA, but I couldn’t find it. And I only find this
invoice.
7 The fact that the invoice reads TOP GEM rather than TOP GEL is
explained in the deposition of Mr. Lin, discussed later.
Opposition Nos. 91100786 and 91104047
11
Q. Was there any other invoices found in that same
cabinet from the 1985, early 1986 time frame?
A. No.
(Dep. at 33-34).
According to Mr. Wong, he began promoting Zenna’s
products in the United States in 1988 and he identified a
1988 newspaper advertisement for Zenna’s products.
Zenna next took the testimony of Su Chin Lin Shen. Ms.
Shen is secretary of the company Rich On. Rich On imports
Zenna’s products and is a distributor of Zenna’s products in
the United States. According to Ms. Shen, Rich On imports
general merchandise from Taiwan and distributes the products
to retailers in the United States, Central America, South
American, Mexico and Southeast Asia. Ms. Shen testified
that the first product Rich On purchased from Zenna was
“Pearl Cream.†(Dep. At 10). When initially asked when Rich
On first purchased “Pearl Cream†from Zenna, Mrs. Shen
testified:
A. Has been long time. When we first made a purchase
it was in 1984. And when we went back it was ‘83
and I saw this product so that’s why I bought
the product back here. And so we purchased in
about ’84, ’85, ’86.
(Dep. at 11).
Mrs. Shen was asked several more times when Rich On first
purchased “Pearl Cream†from Zenna and she responded in the
following manners:
… It be long time. Long time. 10-plus years ago…10-
plus years ago. If that’s imported, then there would
Opposition Nos. 91100786 and 91104047
12
be documentations. Any further I would not be able to
find those documents. (Dep. at 14).
….
It has been long time, but if there were invoice, it
had been a long time. All I can say is ’84, ’85,
’86. Somewhere there.†(Dep. at 14).
….
Have been long time. Maybe ‘86, 80-some. Long
time. (Dep. at 15).
Mr. Shen testified that when Rich On imported products
from Zenna, some documentation would be included with the
shipment in the normal course of business. These documents
would include an invoice, shipping document, air waybill,
and sometimes catalogs. Ms. Shen identified a package of
“Pearl Cream†bearing the marks TOP-GEL MCA. She stated
that these marks were on the products she purchased from
Zenna. Ms. Shen identified an invoice (found in Zenna’s
records) from Zenna to Rich On dated 1986 for TOP GEL MCA
“Pearl Cream†and a supporting air waybill. Rich On had no
records of this transaction as Ms. Shen testified that Rich
On does not retain records older than five years. Ms. Shen
testified that Rich On continued to purchase TOP-GEL MCA
products from Zenna until 2-3 years before her deposition.
Ms. Shen was asked once again about the timing of Rich
On’s first purchase from Zenna:
Q. You said you first purchased these from Zenna
in about 1984; is that correct?
A. Yeah. I have seen it. Yes. If you ask me
whether I actually made a purchase, I cannot
really say because I am afraid one day you may
Opposition Nos. 91100786 and 91104047
13
ask me to look for it. I will not be able to
prove to you. I told you before in ’83 I have
seen it. ’84 I went there because we have to
first see the time before we make the purchase.
(Dep. at 24).
On cross-examination, Ms. Shen testified that Rich On
has sold products to customers in California and other
states, although she did not identify any specific customers
by name.
Zenna also took the testimony of its Director, K. A.
Lin. Mr. Lin testified that his responsibilities include
management, the development of products, and purchasing.
According to Mr. Lin, Zenna is a company with 5-6 employees
and is in the business of manufacturing cosmetics. Mr. Lin
testified that TOP-GEL means “the best gel†in Chinese.
When asked when Zenna began manufacturing TOP-GEL MCA
products, Mr. Lin responded:
A. Around 1983 or 1984, that era. It’s been a long
time. I can’t recall.
(Dep. at 16)
Mr. Lin identified a document that has a sketch of the mark
MCA and Chinese handwriting on it and on the second page of
the document it says “This is a short explanation of how the
name TOP-GEL came about.†(Dep. at 19). Mr. Lin indicated
that the document is a “draft that we work on the design at
the time.†(Dep. at 19). When asked “At what timeâ€, he
said: “A long time ago. I can’t recall. Sometimes when
Opposition Nos. 91100786 and 91104047
14
you ask me about time frames, I can’t remember. Also about
that era, 1984 or 1983.†(Dep. at 20).
Mr. Lin testified that Zenna currently sells products
to the United States and many Asian countries generally
through an agent. Mr. Lin was asked about Zenna’s sale of
products to U.S. companies:
Q. You mentioned a moment ago that you’ve sold
products to – I’m sorry. You mentioned the names
of two U.S. businesses that sold Zenna products.
You mentioned Asia Company and Rich On. Are
there any other businesses in the United States
that sell Zenna products?
A. There is one, Tailee.
Q. And where are they located?
A. This I’m not sure.
Q. Are these wholesalers?
A. I’m not sure.
Q. Or distributors?
A. Because honestly, in this regard I did not
ask them.
Q. When did Zenna begin selling products in
the United States?
A. I forgot because it’s been a long time.
1980-something, but I can’t remember. It’s
been a long time.
(Dep. at 34).
When asked about the invoice (found in Asia Company’s
records) dated June 16, 1985 from Zenna to Asia Company for
products described as “TOP GEMâ€, Mr. Lin testified that the
fact that the invoice says “TOP GEM†rather than “TOP GELâ€
Opposition Nos. 91100786 and 91104047
15
is probably a typographical error. Mr. Lin identified a
copy of an air waybill dated August 21, 1986 where the
shipper is identified as Zenna Company and the consignee is
Rich On, Inc. Mr. Lin testified that the document indicates
that 700 dozen units of TOP-GEL MCA cosmetics cream were
shipped by air from Zenna to Rich On. Mr. Lin identified
another invoice dated August 18, 1986 from Zenna to Rich On
in connection with the air shipment. Further, Mr. Lin
identified a copy of an “export permitâ€, a portion of which
is in English and indicates that Zenna is shipping TOP-GEL
MCA Cream to Los Angeles in 1988. Also, Mr. Linn identified
a copy of an invoice dated August 13, 1993 indicating that
TOP-GEL MCA face cream was shipped to Asia Company by Kim
Overseas Company, an agent of Zenna.
Mr. Lin testified that information concerning Zenna’s
sales of TOP-GEL MCA products to companies in the United
States is with its exporters. However, Zenna did obtain
some limited information from the exporters and compiled
what was according to Mr. Lin a summary of representative
sales to U.S. companies for the period 1985-2002. The
summary is primarily in Chinese
With regards to Zenna’s first use dates, Mr. Linn was
asked on direct examination why Zenna, in its application,
claimed January 1990 as its date of first use in commerce:
Q. Mr. Lin, when Zenna filed its trademark
application for Top Gel MCA in the United States in
Opposition Nos. 91100786 and 91104047
16
1994, the application alleged a date of first use
in commerce of January 1990. As we’ve seen today,
Zenna has since produced documents showing sales
much earlier than that, at least as early as
June 1985. Can you explain why in 1994 Zenna’s
application alleged a date of first use in
commerce of 1990?
A. Because through Tai E we filed the application.
Q. What is Tai E?
A. Tai E International, the company who applied for
the trademark on our behalf. Therefore I did not
think that it was very important at the time
because in Taiwan the government only keep the
records for five years. I think at that time
it would be better for us to say 1990 for ten
years because we still have information, and at
that time we could only find some evidence
starting from 1990, around that time, because we
had to do a lot of things. We were very busy with
our business.
Q. I see. So I understand that – if I understand
correctly, at that time that Zenna applied for Top
Gel MCA at the U.S. Trademark Office, it didn’t
think that the date of first use in commerce would
be an issue?
A. Correct.
Q. And so Zenna stated a conservative date.
A. The dates that we could provide the
information to them.
Q. At that time.
A. Correct. Like our invoices. They are prepared
by our young lady. We seriously try to obtain them
from the exporters. And for some they could locate
the older ones, and we kept looking for the
information at an earlier time.
Q. I’m sorry. So that means that as the course
of this trademark opposition has gone along, you’ve
searched for additional records and found that the
date of first use was actually much earlier than
was stated on your trademark application?
Opposition Nos. 91100786 and 91104047
17
A. Correct.
(Dep. at 57-58).
Priority
As noted by our primary reviewing court, “[i]n the
usual case the decision as to priority is made in accordance
with the preponderance of the evidence.†Hydro-Dynamics,
Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987). However, where an
applicant seeks to prove a date earlier than the date
alleged in its application, a heavier burden has been
imposed on the applicant than the common law burden of
preponderance of the evidence. The “proof must be clear and
convincing. This proof may consist of oral testimony, if it
is sufficiently probative. Such testimony should not be
characterized by contradictions, inconsistencies, and
indefiniteness, but should carry with it conviction of its
accuracy and applicability. Moreover, oral testimony given
long after the event, while entitled to consideration,
should be carefully scrutinized, and, if it does not carry
conviction as to its accuracy and applicability, it should
not be sufficient to successfully establish a date of first
use prior to that alleged in the trade mark application.â€
Elder Mfg. Co. v. International Shoe Co., 194 F.2d 114, 118,
92 USPQ 330, 332 (CCPA 1952).
Opposition Nos. 91100786 and 91104047
18
In these proceedings, M.C.A. and Zenna each seek to
prove a date of first use in commerce earlier than the date
alleged in their respective applications. We find that
M.C.A. has established that it first used the marks TOP-GEL
and MCA in commerce in March 1986 by clear and convincing
evidence. M.C.A.’s witness, Mr. Rescigno, was familiar with
M.C.A.’s activities and his testimony was clear as to
M.C.A.’s first use of the marks MCA and TOP-GEL in commerce
with the United States in March 1986. Moreover, Mr.
Rescigno’s testimony was corroborated by documentary
evidence in the nature of an invoice and an air waybill for
goods shipped to M.C.A.’s U.S. distributor, Homeboys
Discount. Further, Mr. Rescigno was specific concerning
M.C.A.’s sales to actual customers, and with respect to the
extent of advertising and promotion of products bearing the
marks MCA and TOP-GEL. Further, Mr. Rescigno testified with
respect to the continued use of the marks in commerce. The
fact that M.C.A. did not take the testimony of any third-
parties, i.e., U.S. distributors or retailers, does not
weaken the testimony of Mr. Rescigno and the evidence
submitted in connection with his testimony. The testimony
of a single witness may establish priority if it is
consistent and definite. 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition §20.09 (3rd ed. 1992).
Opposition Nos. 91100786 and 91104047
19
With regard to Zenna’s witness Mr. Wong, he testified
that he purchased a trial order of Zenna’s MCA TOP-GEL
products “around 1985.†In support of this order, an
invoice dated June 16, 1985 was offered into evidence. The
circumstances surrounding the discovery of the invoice are
highly unusual, particularly in view of Mr. Wong’s testimony
that Asia Company’s documents older than five years are
destroyed rather than retained because of space constraints.
Although Mr. Wong testified that it is Asia Company’s normal
practice to keep related documents such as packing lists and
shipping documents with its invoices, such documents were
not located along with invoice. In short, given the
circumstances surrounding the alleged discovery of this
single invoice without any other supporting documentation,
we find that it does not “carry with it conviction of its
accuracy.â€
Turning next to Ms. Shen’s testimony, Zenna certainly
cannot rely on Ms. Shen to establish that it first used the
TOP-GEL MCA mark in commerce with the United States in 1985.
Her responses to questions concerning when she first
purchased goods from Zenna were vague and confusing. The
time frame encompassed a range of years from 1984 to 1986
and a “long time ago.†Moreover, no documentary evidence
was introduced during Ms. Shen’s testimony with respect to
Zenna’s use of the mark TOP-GEL MCA in commerce in 1985.
Opposition Nos. 91100786 and 91104047
20
The earliest documents identified by Ms. Shen were an
invoice and air waybill for 1986.
With respect to the testimony of Mr. Lin, it does not
establish that Zenna first used the mark TOP-GEL MCA in
commerce on June 19, 1985. Although Mr. Lin testified that
he was in charge of practically everything at Zenna, he
could not remember exactly when Zenna first began
manufacturing TOP-GEL MCA products or when Zenna first sold
products to companies in the United States. Moreover, no
documentary evidence from Zenna’s own records was introduced
relating to use of the TOP-GEL MCA mark in commerce in 1985.
Although Mr. Lin acknowledged that his signature was on the
June 19, 1985 invoice discovered by Asia Company, he could
not remember when Mr. Wong first purchased products from
Zenna. Moreover, as we have indicated, the circumstances
surrounding the discovery of this invoice are suspicious, to
say the least.
In sum, we find that Zenna has failed to establish use
of the mark TOP-GEL MCA in commerce on June 19, 1985 by
clear and convincing evidence. Thus, M.C.A. has priority in
these consolidated proceedings.
M.C.A.’s Motion to Amend
In view of our finding that M.C.A. has established that
it first used the marks TOP-GEL and MCA in commerce in March
1986, no action will be taken on M.C.A.’s pending motion to
Opposition Nos. 91100786 and 91104047
21
amend its application Serial No. 75056059 to assert April
10, 1987 as its date of first use and date of first use in
commerce. Rather, M.C.A. is allowed until thirty days from
the mailing date of this decision to file a further
amendment to its application to assert new dates of first
use.
Decision: Opposition No. 91100786 is sustained and
Opposition No. 91104047 is dismissed.
