Grant Street Group, Inc.v.RealAuction.com, LLC

Trademark Trial and Appeal Board

Sep 29, 2009

No. 91177493 (T.T.A.B. Sep. 29, 2009)

Mailed: 9/29/09

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Grant Street Group, Inc.
v.
RealAuction.com, LLC
_____

Opposition No. 91177493
to application Serial No. 78722507
filed on September 28, 2005
_____

George P. Faines, Esq. for Grant Street Group, Inc.

Mark D. Passler, Jennifer Parkins Rabin and Rachel B.
Rudensky of Akerman Senterfitt for RealAuction.com, LLC.
______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

RealAuction.com, LLC (“applicant”) filed an application
to register the mark REALAUCTION.COM (in standard
characters) for “arranging and conduction of auction sales
featuring tax certificates and other financial instruments”
in International Class 35.1
Grant Street Group, Inc. (“opposer”) opposed

1 Application Serial No. 78722507, filed September 28, 2005,
alleging first use anywhere and first use in commerce on October
6, 2004.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91177493
2
registration on the ground that applicant’s mark, when used
in connection with applicant’s services, so resembles
opposer’s previously used marks REALAUCTION and
REALAUCTION.COM for Internet-based auction services
featuring, among other things, the sale of tax certificates
by governmental entities, as to be likely to cause confusion
under Section 2(d).2
Applicant denied the salient allegations of the notice
of opposition, and specifically set forth, as an affirmative
defense, an allegation that it has priority of use of the
mark REALAUCTION.COM.
The Record
The record consists of the pleadings;3 the file of the
involved application; trial testimony, with related
exhibits, taken by each party; a stipulation of facts
regarding certain of opposer’s exhibits; status and title
copies of three of opposer’s pleaded registrations, excerpts

2 Opposer’s use-based application Serial Nos. 78753567 and
78753583 to register the marks REALAUCTION and REALAUCTION.COM,
respectively, both filed November 14, 2005, have been suspended
pending the diposition of applicant’s earlier-filed application
Serial No. 78722507 that is being opposed herein.
3 Opposer attached numerous exhibits to the notice of opposition,
indicating that it intended at trial to rely on the materials
pursuant to a notice of reliance. Exhibits attached to
pleadings, except in limited circumstances not present here, are
not evidence on behalf of the party to whose pleading the
exhibits are attached unless identified and introduced in
evidence as an exhibit during trial. Trademark Rule 2.122(c);
and TBMP §317 (2d ed. rev. 2004). Further, applicant indicated
in its answer that it reserved the right to object to the
admissibility and authenticity of the materials if and when
introduced at trial.
Opposition No. 91177493
3
of a discovery deposition, and applicant’s responses to
certain interrogatories, all introduced by way of opposer’s
notices of reliance; and an excerpt from a printed
publication, portions of a discovery deposition, one
official record, and opposer’s responses to certain
interrogatories, all introduced by way of applicant’s notice
of reliance. Both parties filed briefs.
The Parties and Services
Opposer is engaged in the development, hosting,
administration and servicing of customized software
applications and Internet-based auction platforms used by
financial institutions and government entities to support a
variety of financial transactions related to online auctions
of delinquent tax certificates, tax deeds, foreclosures,
sheriff sales, municipal bonds, certificates of deposit,
guaranteed investment contracts and other financial
instruments. Opposer has been in business since 1997, and
has hosted thousands of auctions exceeding $10 trillion for
2000 clients, making it the world’s largest online
auctioneer of new-issue fixed-income instruments. As of the
July 1, 2008 testimony of Myles Harrington, opposer’s
president and chief executive officer, opposer had not
hosted any online auctions under its REALAUCTION and
REALAUCTION.COM marks. (Harrington dep., pp. 110-111).
Opposition No. 91177493
4
Applicant is engaged in the online auction of
delinquent tax certificates. According to Lloyd McClendon,
applicant’s owner, beginning on May 1, 2005, and running
through May 23, 2005, applicant conducted its first online
auction under its REALAUCTION.COM mark for Putnam County,
Florida. (McClendon dep., pp. 67-70). Later in 2005,
applicant presented demonstrations to the Arizona Tax
Collector’s Conference and the Colorado County Treasurers’
Conference. (McClendon dep., pp. 69-70). In September
2005, applicant contracted with Yavapai County, Arizona to
administer its REALAUCTION.COM auction services. The
auction took place in February 2006. (McClendon dep., p.
71).
Applicant continues to attend 8-12 conferences per year
at which it schedules demonstrations of its REALAUCTION.COM
services. (McClendon dep., pp. 73-74). To date, applicant
has administered approximately fifty online tax certificate
auctions under the mark REALAUCTION.COM in Florida, Arizona
and Colorado.
Entities such as states, counties and municipalities
raise revenue by levying real estate taxes on property
owners. When the owner fails to pay the taxes on time, the
taxing authority places a lien on the property. The taxing
authority has the option to sell the right to collect the
tax plus interest at public auction to investors in exchange
Opposition No. 91177493
5
for immediate payment of the tax. The auction winner
receives a tax lien certificate or a tax certificate. The
purchaser of the tax certificate pays the taxing authority
on behalf of the property owner, and then holds the right to
collect from the property owner the tax paid plus interest.
If the property owner does not timely pay the holder of the
tax certificate, there is a foreclosure proceeding under
which title to the property is transferred. The property is
sold at public auction, and the winner is issued a tax deed
that conveys property title.
In recent years taxing authorities have expanded the
reach of their auctions by conducting them over the
Internet. Many of the taxing authorities do not have the
capability of administering online auctions on their own.
Consequently, outside contractors such as opposer and
applicant have entered the business to do so. Although the
taxing authority hosts the auction, companies such as
opposer and applicant actually run the auction by developing
the auction software, creating a website for the auction,
advertising the auction, handling customer services, and
eventually transmitting the results of the auction to the
taxing authority. The parties promote their services
through trade show and industry convention appearances, and
demonstrations for potential customers, as well as press
Opposition No. 91177493
6
releases, direct contacts, cold calls and targeted
mailings.4
Standing
Standing is a threshold issue to determine whether
one’s belief that it will be damaged by the registration
sought is reasonable and reflects a real interest in the
case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999). Opposer is in the same business as
applicant, and opposer has marketed goods and/or services
under the REALAUCTION and REALAUCTION.COM marks to state
counties. Such activities are discussed in detail below in
the context of priority of use. Accordingly, we find that
opposer has standing to bring the notice of opposition.
Issue
It is important to discern, at the outset, the specific
issue for the Board to decide in this opposition proceeding.
In the notice of opposition, opposer based its claim of
likelihood of confusion solely on its alleged prior common

4 The parties in this case are not strangers as we note their
involvement in a domain dispute. In September 2004, applicant
obtained the domain name, “realauction.com.” In December 2004,
and after opposer obtained state trademark registrations in
Florida, opposer took action to have the domain name transferred
to it. Opposer requested the National Arbitration Forum,
pursuant to the Uniform Name Dispute Resolution Policy, to
transfer the “realauction.com” domain name from applicant to
opposer. The arbitrator found that opposer had not established
rights in marks similar or identical to applicant’s domain name
prior to the time applicant acquired ownership of the domain
name. Accordingly, opposer’s request for transfer was denied on
February 7, 2005.
Opposition No. 91177493
7
law rights in the marks REALAUCTION and REALAUCTION.COM. In
paragraph 7 of the notice of opposition, opposer very
generally pleaded ownership of “numerous” trademarks used in
connection with “Internet-based auction platforms and
services which are listed in the ‘Trademarks’ section of the
‘Legal Notice’ link on opposer’s web site,
www.grantstreet.com.” The legal notice lists approximately
225 trademarks. It is significant to note, however, that
the only marks specifically pleaded in the notice of
opposition are REALAUCTION and REALAUCTION.COM. When
pleading the ground of likelihood of confusion in paragraph
27 of the notice of opposition, opposer refers to only its
REALAUCTION and REALAUCTION.COM marks; likewise, in
connection with its claim of damage and prayer for relief in
paragraph 47, opposer refers to only these two marks.
During trial, opposer properly introduced its
registrations of the following marks: MUNIAUCTION (No.
2943476 under §2(f)); AUCTIONSERVE (No. 2502950); and
AUCTIONSERV (No. 2502951), all for “online auctions with
respect to investment products and the provision of bidding
information with respect to online auctions.”
Opposer, in the “Introduction” section of its brief (p.
5), makes passing references to its purported prior rights
in its “family of related ‘AUCTION’ marks (e.g. REALAUCTION,
LIENAUCTION, MUNIAUCTION®, YIELDAUCTION, GICAUCTION,
Opposition No. 91177493
8
AUCTIONSERVE®, AUCTIONSERV®, etc.).” In its “Statement of
the Issues” section of the brief (p. 6), opposer asserts
that it “is the senior user of the REALAUCTION.COM mark (as
well as a family of ‘AUCTION’ marks).” Opposer subsequently
makes two quick references to its mark LIENAUCTION at page
7; the brief is otherwise silent as to any marks other than
opposer’s REALAUCTION and REALAUCTION.COM marks. So as to
be clear, this silence extends even to the registered marks
mentioned above. The priority and likelihood of confusion
discussions refer to only opposer’s REALAUCTION and
REALAUCTION.COM marks. The purported instances of actual
confusion are based strictly on these two marks. Opposer’s
“Conclusion” section of the brief (p. 35) is consistent,
referring yet again to only these two marks.
Applicant, in framing the issues of the case (Brief,
pp. 6-7), confines opposer’s marks to REALAUCTION and
REALAUCTION.COM. Applicant later states, in its Brief at
page 33, the following:
Opposer attempts to strengthen its claim
against [applicant] by mentioning in
Opposer’s Brief (notably, not pleaded in
its Notice of Opposition), that Opposer
has a family of marks using the common
word “auction” as the surname element.
This claim must fail, because Opposer
has altogether failed to establish any
of the elements of a service mark
family.

Opposition No. 91177493
9
Applicant then addresses the merits of opposer’s “belated”
claim, contending that, in any event, opposer has failed to
establish a family of “AUCTION” marks.
Opposer, in its reply brief (p. 12), argues that it has
shown use of the “AUCTION surname” prior to the filing date
of applicant’s application, and that it “has promoted the
name REALAUCTION together with its other services like
YieldAuction, LienAuction, and GIGAuction, as well as
MuniAuction.”
Opposer’s purported family of “AUCTION” marks was not
pleaded in the notice of opposition. Further, opposer’s
belated claim of ownership of a family of marks was not
tried, either explicitly or impliedly, during the testimony
periods. Fed. R. Civ. P. 15(b). Accordingly, opposer’s
claim in its brief that it owns a family of “AUCTION” marks
has not been considered in making our determination herein.
We hasten to add that, in any event, opposer has failed
to establish a family of “AUCTION” marks, essentially for
the reasons spelled out by applicant in its responsive
brief. (pp. 33-34). More specifically, the record does not
show that opposer’s marks that are asserted to make up the
family have been used and advertised in such a manner that
consumers have come to recognize that the family surname,
“AUCTION,” is indicative of a common origin of the services.
See J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
Opposition No. 91177493
10
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and White Heather
Distillers, Ltd. v. American Distilling Co., 200 USPQ 466
(TTAB 1978). Further, the evidence fails to prove that the
family surname, “AUCTION,” is inherently distinctive or has
acquired distinctiveness; rather, the common meaning of
“auction” shows that the term is nothing other than a highly
descriptive (if not generic) term when used in connection
with opposer’s auction-related goods and/or services. A
family of marks generally will not be found to exist where
the asserted family element is a descriptive or common term
that does not serve as a distinguishing feature of the marks
under consideration. See Servo Corp. of America v. Servo-
Tek Products Co., 289 F.2d 955, 129 USPQ 352 (CCPA 1961);
and American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ
457 (TTAB 1978).
The sum of opposer’s litigation approach in this
proceeding is that except for REALAUCTION and
REALAUCTION.COM, no other marks, either individually or
collectively, were tried as part of opposer’s claim of
priority and likelihood of confusion. Moreover, opposer’s
brief clearly focuses on these two marks.
In view of the above, the sole issue before us involves
priority and likelihood of confusion between applicant’s
applied-for mark and opposer’s REALAUCTION and
REALAUCTION.COM marks.
Opposition No. 91177493
11
Likelihood of Confusion
Although applicant essentially denied in its answer the
salient allegations of likelihood of confusion, applicant no
longer disputes, as indicated in its brief, opposer’s
likelihood of confusion claim. Indeed, the parties are
using identical marks (opposer’s REALAUCTION and
REALAUCTION.COM and applicant’s REALAUCTION.COM) for
identical and/or closely related services. The services are
rendered through the same trade channels to the same classes
of purchasers, including state, county and municipal
treasurers, tax collectors and sheriffs. The record also
includes evidence of purported instances of actual confusion
between the parties’ REALAUCTION and REALAUCTION.COM marks.
Accordingly, it is clear that the contemporaneous use
of opposer’s REALAUCTION and REALAUCTION.COM marks and
applicant’s REALAUCTION.COM mark for the same or similar
online auction services is likely to cause confusion among
purchasers, even sophisticated ones.
Priority of Use
Inasmuch as the parties essentially agree that there is
a likelihood of confusion between the REALAUCTION and
REALAUCTION.COM marks, the crux of the parties’ controversy
is priority of use.5 Opposer contends that it adopted and

5 Although the relevant language in the notice of opposition is
couched, in part, in terms that applicant is not the rightful
Opposition No. 91177493
12
has continuously used the marks REALAUCTION and
REALAUCTION.COM in connection with its online auction
services prior to any date upon which applicant is entitled
to rely. Applicant counters by arguing that opposer’s
priority is based on use analogous to trademark use, but
that opposer’s activities fall short of showing use that is
sufficient to establish priority. The relevant facts are
largely not in dispute, but rather the legal consequences
that result therefrom.
In the present case, applicant is entitled to rely on,
at a bare minimum, the filing date of its application. This
date serves as a constructive use date for applicant. An
application filing date for a use-based application can
establish first use of a mark. Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994).6
Thus, opposer’s priority must predate, at the very
least, applicant’s filing date of September 28, 2005. As
noted earlier, Mr. Harrington stated that opposer had not
conducted any auction under the marks by applicant’s filing
date. Accordingly, opposer’s priority must rest on use
analogous to trademark use. We find that opposer has failed

owner of the mark, the underlying basis for this claim is that
applicant lacks ownership because opposer is the prior user.
6 This is not to say, however, that, in a priority contest,
applicant cannot claim and prove a date of first use earlier than
its filing date. We need not reach this issue herein inasmuch as
opposer must beat, at a bare minimum, applicant’s filing date.
Opposition No. 91177493
13
to prove such use.
Opposer’s Activities
In October 2003 opposer created a single document that
opposer calls a “product profile.” The document is intended
to promote opposer’s “new” auction platform and services for
tax deed, mortgage foreclosure and sheriff sales. The one-
page document is reproduced below.

The document essentially is a screenshot of what opposer’s
auction screen would look like. Helen Johns, opposer’s
director of administration, testified that, on October 28,
Opposition No. 91177493
14
2003, opposer mailed the product profile to Kern County,
California; and sent an email with accompanying materials to
Merced County, California and Summit County, Ohio. All
three counties were prospective customers for opposer’s
online auction services.
In addition, also on October 28, 2003, opposer sent the
product profile to twenty-three individuals (representing
eight California counties) of the California Association of
County Treasurers and Tax Collectors (CACTTC). The body of
the email makes no reference to either REALAUCTION or
REALAUCTION.COM. The email refers to a presentation of
opposer’s “Internet investment auction web site”; Mr.
Harrington testified that the presentation involved a
demonstration of opposer’s “LienAuction” product, as an
illustration of how the REALAUCTION product would actually
work. (Harrington dep, p. 105). It is common for opposer
to use a “seasoned” product to demonstrate a new offering,
as is the case here. (Harrington dep., p. 149). Helen
Johns, opposer’s director of administration, testified that,
to her knowledge, the “product profile” is opposer’s only
marketing document ever produced for its proposed
REALAUCTION services. (Johns dep., p. 49). Walter Horigan,
one of opposer’s project managers, confirmed that other than
the one-page product profile document, no other material was
handed out to anyone at any time. (Horigan dep., p. 60).
Opposition No. 91177493
15
Indeed, the record is devoid of any other marketing
materials for goods and/or services identified by
REALAUCTION or REALAUCTION.COM.
On November 5, 2003, opposer sent a follow-up letter to
the treasurer of Mariposa County, California, referencing
its presentation to the CATTC. The product profile for the
REALAUCTION goods/services accompanied the letter.
The record does not include any additional contacts
with counties in California. Opposer’s focus then shifted
to Florida.
During the period 2003-2004, opposer held discussions
with Orange County, Florida, with specific discussions
identified as taking place in October 2003 and February
2004. In July 2004 opposer engaged in discussions with
Miami-Dade County, Florida. The REALAUCTION product profile
was given to both prospective customers; at this time,
however, Florida did not yet allow for the online auction of
tax certificates. Also in July 2004 opposer communicated
with the Director of Court Services at the Florida
Association of County Clerks regarding opposer’s proposed
services and the need for legislation to permit the
rendering of such services in the state of Florida.
A screen shot of opposer’s website’s home page on
October 20, 2004 shows a listing of terms, including
RealAuction, LienAuction, YieldAuction and MuniAuction.
Opposition No. 91177493
16
Robert O’Neill, opposer’s director of software development,
states that REALAUCTION first appeared on opposer’s website
in early 2004. (O’Neill dep., p. 8).
Opposer owns Florida trademark registrations of
REALAUCTION, issued October 21, 2004, and REALAUCTION.COM,
issued December 22, 2004.
The next activity identified by opposer is a proposal
made on February 9, 2007 to Broward County, Florida, another
prospective customer. Opposer did not introduce any
documentary evidence that shows use of REALAUCTION or
REALAUCTION.COM in connection with its Florida activities in
July 2004 and February 2007.
In 2008, Broward County, Florida selected opposer as
its official vendor for a tax collection and billing system
that included Internet auctions. (Harrington dep., p. 72).
The record does not show, however, that any goods and/or
services actually were ever sold or rendered under the
REALAUCTION or REALAUCTION.COM mark. As of the date of his
testimony on July 1, 2008, Mr. Harrington indicated that
opposer had not hosted any online auctions under its
REALAUCTION and REALAUCTION.COM marks. (Harrington dep.,
pp. 110-111).
Opposer contends that “[v]iewed together, the above
evidence establishes Opposer’s continuous use of the
REALAUCTION and REALAUCTION.COM trademarks in the industry
Opposition No. 91177493
17
pertaining to Internet-based auction platforms and services
for federal, state and local governments and
municipalities.” (Brief, p. 13).
ANALYSIS
The present proceeding is governed by the principles
set forth by our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit. A party claiming prior use
of a mark may oppose registration of the same or similar
mark on the basis of such prior use pursuant to Section 13
of the Trademark Act, 15 U.S.C. §1063. See West Florida
Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1662 (Fed. Cir. 1994). Opposer, as the party
plaintiff in this opposition, must prove its claim for
relief by a preponderance of the evidence. Department of
Justice, FBI v. Calspan Corp., 578 F.2d 295, 198 USPQ 147,
151 (CCPA 1978).
To establish priority on a likelihood of confusion
claim brought under Section 2(d), a party must prove that,
vis-à-vis the other party, it owns “a mark or trade name
previously used in the United States...and not abandoned.”
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. See Herbko International Inc. v. Kappa
Opposition No. 91177493
18
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir.
2002).
As noted above, as of the time of its testimony in July
2008, opposer had not yet conducted any online auctions
under its REALAUCTION or REALAUCTION.COM marks. Thus,
opposer’s claim of priority must rest on a use analogous to
trademark use theory. We note the following language by
Professor McCarthy:
For purposes of priority of use under
common law or Lanham Act §43(a) or §2(d)
priority disputes, some form of pre-
sales publicity or sales solicitation
may suffice to prove priority over a
rival user. Several modern cases adopt
this approach, albeit somewhat
tentatively and cautiously, since they
are stretching the familiar “traditional
rule” in order to achieve a fair and
equitable result on the facts. When the
contesting parties are neck-and-neck in
a race to the marketplace under a mark,
resolution of such a priority dispute
can only be made on an informed
balancing of the totality of the facts.
There is no “official stewards’
photograph” of the event that will
resolve all doubts, as in a horse race.
J.T. McCarthy, 2 McCarthy on Trademarks and Unfair
Competition, §16:13 (4th ed. 2009).
Our primary reviewing court has stated that an
“analogous use” opposition can succeed “only where the
analogous use is of such a nature and extent as to create
public identification of the target term with the opposer’s
product or service.” T.A.B. Systems v. PacTel Teletrac, 77
Opposition No. 91177493
19
F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996). The Court
stated an “unbroken line of precedents of both this court
and the Board make clear that activities claimed to
constitute analogous use must have substantial impact on the
purchasing public.” Id. at 1882. The Federal Circuit
summarized the test for the sufficiency of analogous use
efforts: “[W]hether it was sufficiently clear, widespread
and repetitive to create the required association in the
minds of the potential purchasers between the mark as an
indicator of a particular source and the service to become
available later.” Id. The Court added:
The cases on analogous use have not
required that the opposer proffer survey
evidence or other direct evidence of the
consuming public’s identification of the
target word or phrase with the opposer
as the source of a given product or
service. Instead, the fact finder may
infer the fact of identification on the
basis of indirect evidence regarding the
opposer’s use of the word or phrase in
advertising brochures, catalogs,
newspaper ads, and articles in
newspapers and trade publications.
[citation omitted] Where, however, such
indirect evidence falls short of
supporting the critical inference of
identification in the mind of the
consuming public, we have not hesitated
to reject an analogous use opposition.

[I]t is clear that the test [of
sufficiency for analogous use of a
mark]...is directed at the actual
perception of the potential consumers of
the service, not some hypothetical
person or the intent of the marketer.
Thus, under any and all of the
Opposition No. 91177493
20
articulations of the test, it is actual
public perception that is required.

The user’s intent, no matter how clearly
established, cannot suffice in lieu of
proof of the necessary “prior public
identification.” Id. at 1883.

The record shows that opposer conducted demonstrations
of its LIENAUCTION software to show potential customers how
the prospective REALAUCTION and REALAUCTION.COM online
auctions would be conducted. Thus, at best, prospective
customers were shown prototype-like software to be used in
rendering opposer’s auction services. Further, most of
opposer’s emails do not even make reference to the
REALAUCTION or REALAUCTION.COM mark, and the only marketing
document on which the trademarks appear is a single “product
profile.” See Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555-56
(9th Cir. 1999):
West Coast must establish that its e-
mail correspondence constituted “[u]se
in a way sufficiently public to identify
or distinguish the marked goods in an
appropriate segment of the public mind
as those of the adopter of the
mark...Its purported “use” is akin to
putting one’s mark “on a business office
door sign, letterheads, architectural
drawings, etc.” or on a prototype
displayed to a potential buyer, both of
which have been held to be insufficient
to establish trademark rights.
(citations omitted)

The prototype-like product demonstrations using opposer’s
LienAuction software, and very limited email correspondence
Opposition No. 91177493
21
(most of which did not include any reference to the
REALAUCTION or REALAUCTION.COM mark), fall far short in
creating an association among the public between the
REALAUCTION and REALAUCTION.COM marks and opposer.
Of particular importance in the present case is the
degree to which opposer’s marks have been exposed to the
relevant purchasers, and the purchasers’ perception
regarding the marks. In this connection, we further look to
the language of the Federal Circuit in T.A.B. Systems v.
PacTel Teletrac, 37 USPQ2d at 1883-84:
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. However close the linkage
between the mark and the future service,
analogous use could not be shown on such
facts because the actual number of
potential customers reached, not the
strength of the linkage for some
“reasonable potential customer,” is the
focal point of the analogous use
inquiry. [W]hat is required is “public
exposure of a mark that would be
expected to have any significant impact
on the purchasing public.” [citation
omitted]

That is not to say that a fixed
percentage, like 20%, much less 51%, of
the potential customers must have formed
in their mind the required “prior public
identification.” As we noted above, it
simply requires “more than a negligible
portion of the relevant market.” In
other words, advertising of sufficient
Opposition No. 91177493
22
clarity and repetition to create the
required identification must have
reached a substantial portion of the
public that might be expected to
purchase the service. Thus, the user
must prove that the “necessary
association” was created among more than
an insubstantial number of potential
customers. Otherwise, he cannot show
“significant impact on the purchasing
public.”

Whether adequate proof was in fact
available but simply was not gathered
and proffered by [opposer] is not a
subject on which we can, should or do
speculate. Rather, we must take the
record as [opposer] made it. [emphasis
in original]

Opposer’s trademarks were exposed to a total of eight
counties in California (Kern, Mariposa, Merced, Tulare,
Madera, Kings, Fresno, and San Benito); one county in Ohio
(Summit); and three counties in Florida (Orange, Miami-Dade
and Broward). Opposer’s president and chief executive
officer stated that there are a “couple of thousand”
counties in the United States (Harrington dep., p. 112); and
that there are sixty-seven county clerks in Florida
(Harrington dep., p. 62). Applicant submitted evidence from
the National Association of Counties indicating that there
are 3068 counties in the United States. (Applicant’s notice
of reliance, ex. no. 81).
Simply put, exposure of opposer’s trademarks to twelve
counties is nothing more than negligible exposure. Even if
the over 3000 counties in the United States were not
Opposition No. 91177493
23
prospective customers of opposer because their states did
not yet allow online auctions of the type proposed by
opposer under the marks REALAUCTION and REALAUCTION.COM, the
record establishes that, at a minimum, the states of
California, Florida and Arizona did allow such auctions as
of the date of trial. Exposure of the trademarks to just
eight counties in California, three counties in Florida, and
one county in Ohio constitutes nothing more than negligible
exposure insufficient to create the necessary “prior public
identification.”
In considering the record before us, we take into
consideration the Federal Circuit’s admonition when we
determine the priority issue herein:
The TTAB concluded that each piece of
evidence individually failed to
establish prior use. 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. The TTAB failed to
appreciate this. Instead, the TTAB
dissected the evidence to the point that
it refused to recognize, or at least it
overlooked, the clear interrelationships
existing between the several pieces of
evidence submitted. When each piece of
evidence is considered in light of the
rest of the evidence, rather than
individually, the evidence as a whole
establishes by a preponderance that West
Opposition No. 91177493
24
used the “FAST EDDIE’S” mark prior to
Jet’s admitted first use of the mark.

West Florida Seafood, 31 USPQ2d at 1663.
When we consider all the pieces of the puzzle relating
to opposer’s use analogous to trademark use, opposer’s
evidence falls short of supporting the critical inference of
identification of the REALAUCTION and REALAUCTION.COM marks
with opposer as the source in the minds of potential
purchasers as of the filing date of the involved application
(September 28, 2005).
In this case opposer’s evidence demonstrates at best
that it used, prior to applicant’s filing date, REALAUCTION
and REALAUCTION.COM in some demonstrations, limited e-mails
and in a one-page document. Opposer’s evidence, shown to a
small number of prospective customers, is simply not of the
caliber of the evidence (in either nature or degree) to
establish that use of REALAUCTION or REALAUCTION.COM was use
analogous to trademark use.
It is opposer’s position that it offered services under
the mark REALAUCTION at least one year prior to applicant
“in terms of initialization of effort” and that applicant
followed by “copying” opposer’s goods and services under the
same mark. (Harrington dep., pp. 82-84). The problem is
that the evidence falls short of establishing any type of
use that would support an argument of priority based on use
analogous to trademark use. Liqwacon Corp. v. Browning-
Opposition No. 91177493
25
Ferris Industries, Inc., 203 USPQ 305, 308 (TTAB 1979)
(“Thus, in any controversy involving the ownership of a
particular mark or priority therein, the right thereto
accrues to the party first to use the mark in trade and not
to the first adopter but subsequent user of the term in
trade.”).
In view of opposer’s failure to establish priority of
its REALAUCTION and REALAUCTION.COM marks, its claim of
likelihood of confusion under Section 2(d) based on these
marks must fail.
Decision: The opposition is dismissed.