Blast or blown away? Proving priority gets a little hairy

Would-be plaintiffs obsess over the confusion issue, but they often overlook the matter of priority of use

As readers may already appreciate, to prove trademark infringement, a plaintiff has to meet two equally important requirements.

First, it must demonstrate that a defendant’s mark is likely to cause confusion with the plaintiff’s own. Second, the plaintiff must be able to prove that it used its own mark before the defendant used its mark.

Often, when determining whether to sue for trademark infringement, would-be plaintiffs obsess over the confusion issue, but they often overlook the matter of priority of use. And in truth, priority of use is typically a rather boring aspect of an infringement examination. Establishing likelihood of confusion can be the more complex and therefore more interesting aspect of a trademark infringement claim, perhaps explaining why the simple question, "Did the plaintiff use its mark before the defendant used its mark?" is passed over.

In most cases, demonstrating priority could not be more cut and dried, and is often just a perfunctory statement in the deciding court’s opinion. In a recent Trademark Trial and Appeal Board case, Blast Blow Dry Bar LLC v. Blown Away LLC d/b/a/ Blast Blow Dry Bar, the issue received the Board’s full attention—though not necessarily for the better.

In Blast, the applicant sought to register the mark BLAST BLOW DRY BAR and the product's design for hair salon services. The opposer claimed a likelihood of confusion with a mark it alleged it had previously used for identical services: BLAST BLOW DRY.

The Board found that the opposer had used its mark on Dec. 8, 2011. The applicant’s priority date was Dec. 10, 2011, the date on which the applicant applied to federally register its mark.

What was particularly interesting about the Board’s finding was that the Board awarded the opposer’s priority date as Dec. 8, 2011, even though on that date, all the opposer had done was: (a) to provide hair styling services, free of charge, to four persons attending a jewelry store’s holiday party; (b) have its stylists wear clothing bearing the BLAST BLOW DRY name while providing those services; and (c) distribute promotional materials.

In most cases, rendering services to only four people would not constitute enough use to establish priority. In this case, seemingly contravening long-standing Board precedent, the Board appeared persuaded by the fact that the parties’ services were low-cost and relatively limited geographically. The Board also seemed impressed by the fact that three weeks after the jewelry store party, the opposer was paid for services rendered to a larger number of customers at its place of business, and that the use of the opposer’s mark continued unabated thereafter.

What makes the Board’s holding stranger is that the applicant also engaged in a promotional event on Dec. 8, 2011 — at a tennis program’s holiday party attended by some 20 people not affiliated with the applicant. During this event, the applicant (a) demonstrated its blow-out technique on one of the applicant’s co-owners; (b) displayed the applicant’s logo on a poster; and (c) distributed promotional materials.

Doesn't this all seem highly reminiscent of what the opposer was doing, on the very same day, at the jewelry store party? If that's what you're thinking, you're right.

The TTAB's decision here is mystifying, and the logic opaque indeed. Unfortunately for the applicant, according to the Board, the applicant did not couple its promotional efforts at the tennis event with the actual rendering of the involved services to potential customers — this because the applicant, unlike the opposer, provided services at the tennis party to one of applicant’s co-owners and not to potential consumers, like the opposer did.

I'm not blown away by the Board's reasoning in making this distinction. If the applicant had "blown-out" an attendee at the party and not one of its co-owners, would we have a priority tie? If the point of trademarks is to identify a source, should it matter whether your demonstration was performed on the corpus of a potential consumer, as in the case of the opposer, or just for the benefit of potential consumers, as in the case of the applicant?

In both cases, isn’t the trademark acting as a source identifier? It is just being shown in a slightly different way.

Notwithstanding reasoning that seems as ephemeral as a mirage shimmering in hot air, having disposed of the priority issue in favor of the opposer, the Board quickly went on to find a likelihood of confusion between the parties’ marks and sustained the opposition.

What can we learn from this case? First, if you want to obtain trademark rights, don’t style one of your co-worker’s hair. Instead, kidnap an unaffiliated third-party at the party and style theirs. Second, don’t forget the priority of priority. Likelihood of confusion might be more sexy and glamorous — but style points aren't the entire substance of victory: You need both to stop a potential infringer.

Contributing Author

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Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...

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