In this unusual factual situation involving two geographically descriptive terms, the Board granted a petition for cancellation of a Supplemental Registration for the mark CHICAGO STAGEHAND, in standard character form, for “employment staffing in the field of labor and technical support in live corporate, concert and special events,” on the ground of likelihood of confusion with the prior-used mark CHICAGO STAGEHANDS for union and staffing services in the live-event and production industry services in the live-event and production industry. The Board found that neither mark had acquired distinctiveness, and so the only issue was whether petitioner used the mark first. Theatrical Stage Employees Union Local No. 2 of the International Alliance of Theatrical Stage Employees and Moving Picture Technicians, Artists and Allied Crafts of the United States and Canada v. David B. Eaves, Cancellation No. 92055242 (February 1, 2017) [not precedential]..

The Board pointed out that in the ordinary case, when two parties vie for proprietary rights in a descriptive term, the case turns not on who used the term first, but on which party’s mark first achieved acquired distinctiveness. Here, the Board found that neither party had established acquired distinctiveness. It therefore chose to follow the CAFC’s dictum in Books on Tape, where the court pointed out that the owner of a Supplemental Registration has no proprietary rights in the registered mark, and that a challenger need not prove proprietary rights (as is usually required to challenged a registration on the Principal Register or a distinctive unregistered mark). In other words, a party “need not wait until it has acquired distinctiveness in its mark before seeking to clear away the impediment.”

Priority: Respondent began operating his business in 2009, with use analogous to trademark use as early as March 2009. Petitioner’s technical trademark use of CHICAGO STAGEHANDS was very limited and not continuous (i.e., sporadic). According to petitioner’s witnesses, the mark appeared on apparel at times prior to 2009.

More significant was the testimony of third parties that they used and recognized CHICAGO STAGEHANDS as a reference to petitioner. This evidence demonstrated that people in the live event trade have used this phrase to describe petitioner and its members, “have found this phrase to immediately convey information about Petitioner and its members; and that they expect others to understand them when they use the phrase to refer to Petitioner and its members.” Petitioner submitted press notices and publications in which CHICAGO STAGEHANDS has been used to describe petitioner and its members.

Courts have, on occasion, found that even where a company itself has not used a mark, use of the mark by the relevant public for the purpose of referring to the company may inure to the benefit of the company even to the extent of resulting in a protectable property right in the term.

The Board found that this evidence of petitioner’s limited use of the term CHICAGO STAGEHANDS, coupled with the public’s ongoing use of that term to describe and refer to petitioner, “are together sufficient to show descriptive use of the term pointing to Petitioner that is prior to any use of the term CHICAGO STAGEHANDS by Respondent.”

Acquired Distinctiveness: Respondent’s mark is a highly descriptive term. The amount of business and his efforts to advertise have been very small. Moreover, his use of the term has not been exclusive. Considering all the evidence, the Board concluded that respondent’s mark lacked acquired distinctiveness.

Petitioner submitted a great deal of evidence but it was mixed and equivocal with regard to the way the public viewed the term CHICAGO STAGEHANDS. There was very little evidence regarding promotion of the mark or name, and furthermore since 2009 petitioner’s use of the term has not been exclusive. Again, the Board concluded that the evidence of acquired distinctiveness was insufficient.

Likelihood of Confusion: The Board found that the services overlap and the marks are identical. It also found that confusion is likely between the two businesses.

Conclusion: Neither party demonstrated a protectable proprietary interest in its designation. The Board’s determination does not affect the right of either party to continue use of its designation, nor does it foreclose either party from demonstrating at another time on a different record that it has in fact acquired distinctiveness.

And so the Board granted the petition for cancellation.