Rolex Watch U.S.A., Inc.v.Montres Jaquet Droz SA (Montres Jaquet Droz AG) (Montres Jaquet Droz Ltd) roz AG) (Montres Jaquet Droz Ltd)

Trademark Trial and Appeal Board

Dec 7, 2020

91242189 (T.T.A.B. Dec. 7, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: December 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rolex Watch U.S.A., Inc.

v.

Montres Jaquet Droz SA
_____

Opposition No. 91242189

_____

Beth Frenchman and Adam Sgro of Gibney, Anthony & Flaherty, LLP
for Rolex Watch U.S.A., Inc.

Marie Anne Mastrovito of Abelman, Frayne & Schwab
for Montres Jaquet Droz SA.
_____

Before Wellington, Heasley and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Montres Jaquet Droz SA (“Applicant”) seeks registration on the Principal Register
of the proposed SOME WATCHES TELL TIME... SOME TELL A STORY mark (in
standard characters) (Applicant’s “STORY Tagline”) for:

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Precious metals and their alloys and goods made of these materials or
plated therewith included in this class, namely, figurines, trophies;
Jewelry, namely, rings, earrings, cufflinks, bracelets, charms, brooches,
chains, necklaces, tie pins, tie clips, jewelry boxes, jewelry cases,
precious stones, semi-precious stones in the nature of gemstones;
Horological and chronometric instruments, namely, watches,
chronographs, clocks, watches, watchstraps, clocks, alarm clocks and
parts and fittings for the aforesaid goods, namely, needles, anchors,
rockers, barrels, watch cases, watch straps, watch dials, clockworks,
watch chains, watch movements, watch springs, watch glasses, cases for
watchmaking, and cases for watches in International Class 14.1
In its Notice of Opposition,2 Rolex Watch U.S.A., Inc. (“Opposer”) opposes
registration of Applicant’s STORY Tagline under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), on the ground that Applicant’s STORY Tagline, as applied to the
goods identified in the application, so resembles Opposer’s unregistered alleged IT
DOESN’T JUST TELL TIME. IT TELLS HISTORY mark (Opposer’s “HISTORY
Tagline”), used in connection with watches, as to be likely to cause confusion, mistake,
or to deceive. Specifically, Opposer alleges:
3. In January 2013, [Opposer] began an advertising campaign featuring
notable individuals wearing Rolex watches (hereafter [Opposer]’s “Icon
Campaign”). [Opposer]’s Icon Campaign features the HISTORY Mark in
print, television, radio and social media advertising used in association
with its offer for sale and sale of Rolex watches. Below are samples of

1 Application Serial No. 87497855 was filed on June 20, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b), claiming priority based upon the December 21, 2016 filing date of
Applicant’s Switzerland Application under Trademark Act Section 44(d), 15 U.S.C. § 1126(d),
and seeking registration based on the issuance of Applicant’s Switzerland registration issued
on January 13, 2017 under Trademark Act Section 44(e), 15 U.S.C. § 1126(e).
2 Notice of Opposition, 1 TTABVUE. References to the pleadings, the evidence of record and
the parties’ briefs refer to the Board’s TTABVUE docket system. Coming before the
designation TTABVUE is the docket entry number; and coming after this designation are the
page and paragraph references, if applicable.

Opposition No. 91242189
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print advertisements featuring [Opposer]’s HISTORY Mark. [Images
omitted].
4. [Opposer] has also used its HISTORY Mark consistently and
continuously in other advertising campaigns it has developed. For the
past five years, advertisements featuring the HISTORY Mark have
appeared in newspapers such as the Wall Street Journal and New York
Times, and in prominent magazines such as Vanity Fair, Town &
Country and Esquire.
5. During the 2017 live broadcast of the Oscar awards ceremony
televised across the United States by the ABC network and viewed by
nearly 32 million people, a Rolex commercial aired which consisted of
several notable movie clips in which iconic movie stars were wearing a
Rolex watch. At the end of the commercial [Opposer]’s HISTORY Mark
appeared across the screen.
6. Since the inception of [Opposer]’s Icon Campaign and other uses of
[Opposer]’s HISTORY Mark, [Opposer] has spent millions of dollars in
advertising which has resulted in the creation of an association between
[Opposer] and its HISTORY Mark and has created a substantial impact
on the purchasing public.
7. [Opposer] has established common law trademark rights in its
HISTORY Mark through its prominent and continuous use.
8. [Opposer]’s HISTORY Mark is distinctive to both the consuming
public and in [Opposer]’s trade.
9. Through [Opposer]’s continuous use, advertising and promotion, the
HISTORY Mark has come to be associated exclusively with [Opposer]
and the watches it offers for sale and sells.
10. Applicant, on June 20, 2017, filed an application under [Section]
44(e) of the Lanham Act to register the STORY Mark in IC 014 for,
among other goods, watches.
11. The earliest date Applicant can rely on for priority of use of its
STORY Mark is June 21, 2016 [sic] which is based on Applicant’s foreign
registration.3
12. Applicant was aware of [Opposer]’s Icon Campaign and the use of its
HISTORY Mark prior to its adoption, use and application for
registration of its STORY Mark.
13. [Opposer]’s HISTORY Mark has priority over Applicant ’s STORY
Mark because [Opposer] established common law trademark rights

3 As stated above in Note 1, Applicant’s priority date is actually December 21, 2016.
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through its prominent use of its mark in association with its watches
long prior to any date of first use Applicant may rely.
14. Applicant’s STORY Mark is nearly identical in visual appearance,
meaning and sound to [Opposer]’s HISTORY Mark.
15. Applicant’s STORY Mark and [Opposer]’s HISTORY Mark have the
same commercial impression.
16. Applicant’s STORY Mark is confusingly similar to [Opposer]’s
HISTORY Mark.
17. Applicant is seeking to apply and use its similar STORY Mark on
watches, which are identical to the goods sold, distributed, promoted and
sponsored by [Opposer].
18. Applicant's STORY Mark, when and if placed on watches and related
goods in [International Class] 14 will likely cause consumer confusion
as to the source of Applicant’s products.
19. The registration of Applicant’s STORY Mark will improperly give to
Applicant the appearance of exclusive statutory ownership rights in a
mark that is confusingly similar to the [Opposer]’s HISTORY Mark in
violation and derogation of the prior and superior rights of [Opposer] in
its trademark.
20. [Opposer] believes that it will be damaged by issuance of the
registration of the STORY Mark.
21. Applicant’s STORY Mark so resembles [Opposer]’s previously used
and common law HISTORY Mark that, when and if applied to
Applicant’s goods, it is likely to cause confusion, mistake, or deception
for purposes of Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)).4
Applicant denied the salient allegations of the Notice of Opposition in its Answer.5
The case is fully briefed. Opposer bears the burden of proving its Trademark Act
Section 2(d) claim by a preponderance of the evidence. See Jansen Enters., Inc. v.
Rind, 85 USPQ2d 1104, 1107 (TTAB 2007). Having considered the evidentiary record,
the parties’ arguments and applicable authorities, as explained below, we find that
Opposer has not carried this burden, and dismiss the Opposition.

4 Notice of Opposition, 1 TTABVUE 3-6.
5 Answer, 4 TTABVUE.
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I. The Evidentiary Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, the
parties agreed to certain stipulations and introduced the following evidence:
A. Parties’ Stipulations
Opposer and Applicant stipulated as follows:

A. The following documents are admitted into evidence:
1. Subpoena from [Opposer] to Scott King, Inc. d/b/a King
Jewelers (“Scott King”), dated July 8, 2019 (the “Scott King
Subpoena”), and Notice of Subpoena dated July 8, 2019 to Jaquet
Droz.6
2. Email from counsel of Scott King, Inc. to [Opposer]’s counsel in
response to the Scott King Subpoena ….
3. Documents produced by Scott King in response to the Scott
King Subpoena ….
B. With respect to the above-referenced documents admitted into
evidence, the parties reserve their right to object to the competency,
relevancy, materiality and/or scope of the documents.
C. The above-referenced documents do not constitute the entire trial
record in this matter and the parties may separately file notices of
reliance relative to other evidence or testimony depictions should they
deem necessary.7
B. Opposer’s Evidence
 Opposer’s First Notice of Reliance (“Opp 1st NoR”) upon certain responses by
Applicant to Opposer’s First Set of Interrogatories (12 TTABVUE).
 Opposer’s Second Notice of Reliance (“Opp 2nd NoR”) upon the transcript and
certain exhibits from the discovery deposition of Applicant’s former U.S. Brand
Manager, Francois Bezault, (“Bezault Dep. Tr.”) (13 TTABVUE-
Nonconfidential; 14 TTABVUE-Confidential).

6 Scott King, Inc. d/b/a King Jewelers is an authorized retailer of Applicant’s JAQUET DROZ
branded merchandise. Bezault Dep. Tr., 13 TTABVUE 177-78.
7 Stipulation, 11 TTABVUE.
Opposition No. 91242189
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 Opposer’s Third Notice of Reliance (“Opp 3rd NoR”) upon third-party Internet
materials (15 TTABVUE).
 Testimony Declaration of Opposer’s Vice President, Marketing and
Communications, Mounia Mechbal, with exhibits (“Mechbal Decl.”) (16
TTABVUE-Nonconfidential; 17 TTABVUE-Confidential).
C. Applicant’s Evidence
 Testimony Declaration of Applicant’s Chief Operating Officer, Christian
Lattmann, with exhibits (“Lattmann Decl.”) (19 TTABVUE; 26 TTABVUE
(corrected exhibit)).
 Testimony Declaration of Applicant’s former U.S. Brand Manager, Francois
Bezault, with exhibits (“Bezault Decl.”) (22 TTABVUE-Nonconfidential; 23
TTABVUE-Confidential).
 Applicant’s First Notice of Reliance (“App 1st NoR”) upon dictionary definitions
of “Story” and “History” (24 TTABVUE).
 Applicant’s Second Notice of Reliance (“App 2nd NoR”) upon certain responses
by Opposer to Applicant’s First Set of Interrogatories (25 TTABVUE).
D. Opposer’s Rebuttal Evidence
 Rebuttal Testimony Declaration of Mounia Mechbal, with an exhibit (“Mechbal
Rebuttal Decl.”) (27 TTABVUE).
 Opposer’s Fourth Notice of Reliance (“Opp 4th NoR”) upon third party Internet
materials, dictionary definitions of “Story” and “History,” and a Wikipedia
definition of Anaphora (rhetoric) (28 TTABVUE).
 Rolex’s Fifth Notice of Reliance upon dictionary definitions of “Story” and
“History” and a third-party magazine displaying advertisements by Opposer
and Applicant (“Opp 5th NoR”) (29 TTABVUE).
II. The Parties
Opposer asserts that it or its predecessors have continuously sold and offered for
sale luxury watches in the United States under the ROLEX trademark since as early
as 1912. Opposer sells its watches to the public through its network of official
jewelers. These official Rolex Jewelers are independently owned retailers who, in
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addition to ROLEX brand watches, offer other watch brands and jewelry for sale.8
The manufacturer of Opposer’s products is Opposer’s ultimate corporate parent,
Rolex S.A. of Geneva, Switzerland.9
Applicant asserts it was first established in 1738 by master craftsman Pierre
Jaquet Droz. Jaquet Droz and his sons became known for their high-quality
timepieces. These timepieces continue to be known for combining innovative design
with the finest materials. In the United States, JAQUET DROZ brand watches are
sold only in a limited number of select boutiques and jewelry stores.10 Applicant is a
wholly owned subsidiary of The Swatch Group Ltd.11
III. Entitlement to Bring and Maintain a Statutory Cause of Action
To establish entitlement to bring and maintain a statutory cause of action under
Trademark Act Section 13, 15 U.S.C., § 1063, a plaintiff must demonstrate “an
interest falling within the zone of interests protected by the statute and … proximate
causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4
(Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572
U.S. 118, 109 USPQ2d 2061, 2067-70 (2014)).12 Stated another way, a plaintiff is

8 Mechbal Decl., 16 TTABVUE 3, ¶ 4.
9 Opposer’s Interrogatory Answer No. 15, App 2nd NoR, 24 TTABVUE 12.
10 Lattmann Decl., 19 TTABVUE 2-3, ¶¶ 5-7.
11 Applicant’s Interrogatory Answer No. 1, Opp 1st NoR, 12 TTABVUE 5.
12 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to bring and maintain a statutory cause of action. Despite the change
in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections
13 and 14 remain equally applicable.
Opposition No. 91242189
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entitled to bring and maintain a statutory cause of action by demonstrating a real
interest in the proceeding and a reasonable belief of damage. Australian Therapeutic
Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed.
Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). According to the Court of Appeals for the
Federal Circuit, there is “no meaningful, substantive difference between the analytica l
frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d
11277 at *4. Thus, “a party that demonstrates a real interest in [opposing registration
of] … a trademark under [Trademark Act Section 13, 15 U.S.C.] § 106[3] has
demonstrated an interest falling within the zone of interests protected by [the
Trademark Act]. … Similarly, a party that demonstrates a reasonable belief of
damage by the registration of a trademark demonstrates proximate causation within
the context of § 106[3]. Corcamore, 2020 USPQ2d 11277 at *7.
Entitlement to bring and maintain a statutory cause of action is demonstrated,
for example, where the plaintiff pleads (and later proves) a claim of likelihood of
confusion that is not wholly without merit. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). This would include such a claim
based upon prior use of a confusingly similar mark. Double Coin Holdings Ltd. v. Tru
Development, 2019 USPQ2d 377409, at *4 (TTAB 2019) (entitlement to bring and
maintain likelihood of confusion claim established, in part, by testimony with exhibits
of earlier use of confusingly similar mark).
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Here, we find that Opposer’s allegations recited above sufficiently plead a claim
of likelihood of confusion that is not wholly without merit. Opposer’s entitlement to
bring and maintain a statutory cause of action moreover is derived from its
demonstrated position as a competitor of Applicant and its reasonable belief in a
likelihood of confusion between its HISTORY Tagline and the STORY Tagline. See,
e.g., Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed.
Cir. 1987) (competitor has standing because it has an interest in the outcome beyond
that of the general public); Grote Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d
1197, 1201-2 (TTAB 2018) (same). Opposer thus has proven its entitlement to bring
and maintain this Opposition.13
IV. Priority
A party opposing an application for registration under Trademark Act Section 2(d)
must prove that it has prior proprietary rights in the term on which it relies to
demonstrate likelihood of confusion as to source. Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). “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 Int’l, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). “[W]ithout proof of priority, [an]

13 To be clear, Opposer’s proof of its prior use of the HISTORY Tagline in order to establish
its entitlement to bring and maintain this Opposition is not the equivalent of proving
sufficient common law use for purposes of establishing priority over Applicant’s STORY
Tagline – a subject to which we turn later in this decision.
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opposer [asserting a Section 2(d) claim] cannot prevail.” Syngenta Crop Protection,
Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1119 (TTAB 2009).
A. Possible Bases for Opposer’s Assertion of Priority
The earliest priority date on which Applicant can rely is the December 21, 2016
filing date of its Switzerland Application under Trademark Act Section 44(d).
Applicant did not make of record any evidence showing use of the STORY Tagline in
commerce before this date.14 L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 (TTAB
2012) (“[T]he Section 44(d) priority filing date of the involved application … is the
earliest date applicant is entitled to claim.”). We now proceed to look at the bases on
which Opposer could rely to establish priority.
In this Opposition, Opposer does not assert ownership of a federal registration for
its claim of proprietary rights.15 Opposer also readily concedes it does not rely on
technical (affixation) trademark use on watches under the Trademark Act16 to

14 “Applicant filed its application to register [the STORY Tagline] on June 20, 2017, based on
its priority application in Switzerland filed on December 21, 2016. Thus, Applicant's rights
to the [Tagline] … date back to at least as early as December 21, 2016.” Applicant’s Brief, 36
TTABVUE 7.
15 “Because Opposer has not pleaded and submitted any registrations, it must rely on its
asserted common law rights ….” WeaponX Performance Prods. Ltd. v. Weapon X Motorsports,
Inc., 126 USPQ2d 1034, 1040-41 (TTAB 2018).
16 For purposes of the Trademark Act, “a mark shall be deemed to be in use in commerce —
(1) on goods when — (A) it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents associated with the goods or
their sale, and (B) the goods are sold or transported in commerce ….” Trademark Act Section
45, 15 U.S.C. § 1127. (Emphasis added).
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establish such rights.17 Further, Opposer neither pleaded, argued in its briefs, nor
provided any evidence to support a claim of trade name use of the HISTORY Tagline:
The term “trade name” is defined in the [Trademark] Act to mean “any
name used by a person to identify his or her business or vocation” as
distinguished from a trademark or service mark which is defined to
mean a name or symbol used to identify and distinguish goods or
services from those of others and to indicate the source of those goods or
services.

Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d
1424, 1428 (Fed. Cir. 1991) (citing Trademark Act Section 45, 15 U.S.C.
§ 1127 (definitions of “trade name,” “trademark” and “service mark”).
B. Use Analogous to Trademark Use
Rather, Opposer argues that it established proprietary rights, and therefore
priority, in the HISTORY Tagline exclusively by way of use analogous to trademark
use (“analogous trademark use” for short).18
1. Analogous Trademark Use Was Not Pleaded or Tried
Applicant objects to Opposer’s reliance on its putative analogous trademark use
because this was not asserted in its Notice of Opposition. Therefore, says Applicant,
Opposer should be precluded from relying on analogous trademark use due to
Opposer’s failure to plead it.19
A claim of priority based on analogous trademark use must be pleaded in order
for the plaintiff to rely on it. DeVivo v Ortiz, 2020 USPQ2d 10153, at *3 n.10 (TTAB

17 Opposer’s Brief, 32 TTABVUE 29; Opposer’s Rebuttal Brief, 37 TTABVUE 7, 15, 17
(Opposer’s use on which it relies for priority is solely based on its advertising).
18 Opposer’s Brief, 32 TTABVUE 29-30; Opposer’s Rebuttal Brief, 37 TTABVUE 15-20.
19 Applicant’s Brief, 36 TTABVUE 15-16.
Opposition No. 91242189
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2020) (“Opposer has not pleaded use analogous to trademark use and Applicant has
made clear that use analogous to trademark use is not an issue in this proceeding.”);
Central Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1142 (TTAB 2013)
(“reliance on priority through analogous use must be pleaded”); Fair Indigo LLC v.
Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) (“Opposer[’s] … alleg[ation] of
‘analogous use …’ [should] provide[] applicant with ample notice of the basis upon
which it seeks to establish priority in this case for its Section 2(d) claim.”).
Although the purpose of notice pleading is to obviate the need to allege particular
“magic words,” See Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 36 USPQ2d
1328, 1330 (TTAB 1994), we find that Opposer’s above-recited allegations in its
Notice of Opposition did not provide Applicant with sufficient notice of the basis for
Opposer’s claim of priority as argued in Opposer’s Briefs. The Notice of Opposition,
the pertinent sections of which are recited at length above, claim general common
law trademark rights, not analogous trademark use. Compare Fair Indigo, 85
USPQ2d at 1539 (“Opposer, by alleging ‘analogous use starting January 2006,’ has
provided applicant with ample notice of the basis upon which it seeks to establish
priority in this case for its Section 2(d) claim.”).
Notwithstanding, the question remains whether the parties litigated analogous
trademark use by express or implied consent under Fed. R. Civ. P. 15(b). Rule 15(b),
made applicable to Board proceedings by Trademark Rule 2.116(a), 37 C.F.R.
§ 2.116(a), provides, in pertinent part, that when issues not raised by the pleadings
are tried by the express or implied consent of the parties, they shall be treated in all
Opposition No. 91242189
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respects as if they had been raised in the pleadings. From a reading of its Brief,
Applicant clearly did not expressly consent to the trial of analogous trademark use
as part of Opposer’s case.
On the other hand, “[i]mplied consent to the trial of an unpleaded issue can be
found only where the non-offering party (1) raised no objection to the introduction of
evidence on the issue, and (2) was fairly apprised that the evidence was being offered
in support of the issue.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 507.03(b) (2020); see also Noble House Home Furnishings, LLC
v. Floorco Enters., LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend
petition after close of trial denied where defendant did not know or agree that the
newly asserted claim was being tried, and where plaintiff unduly delayed in moving
to amend). “The question of whether an issue was tried by consent is basically one of
fairness. The [adverse] … party must be aware that the issue is being tried, and
therefore there should be no doubt on this matter.” Morgan Creek Prods. Inc. v. Foria
Int’l Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).
Applicant argues that “[t]he first instance in which … Opposer gives notice of its
intention to rely on analogous use … appears [in] … its Trial Brief ….”20 Aside from
the allegations in the Notice of Opposition (which we find insufficient), the only other
specific portion of the record Opposer points to as demonstrating Applicant was fairly

20 Applicant’s Brief, 36 TTABVUE 15.
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apprised that Opposer was offering evidence in support of a claim of analogous
trademark use is Opposer’s response to the following interrogatory:21
INTERROGATORY NO. 3:
Describe all facts and circumstances surrounding Opposer ’s adoption of
Opposer’s Mark including the date the mark was adopted, the manner
in which the slogan was created and selected, the reasons for adopting
the mark, and the person(s) involved in the selection of the mark.
Response to Interrogatory No. 3:
[After asserting objections] Opposer ’s Mark was first used by Opposer
in advertising in the United States in May of 2013. Opposer ’s Mark was
featured in Opposer's advertising campaign entitled the Icons
campaign. The advertising which contains Opposer ’s Mark was
produced by J. Walter Thompson. The reasons for adopting Opposer’s
Mark were for use in its advertising and to facilitate the sale of its
watches.

Opposer follows its quotation from this interrogatory answer by its more general
assertion that “the entire trial testimony of [Opposer]’s only witness, Mounia
Mechbal, provides Applicant with fair warning that [Opposer]’s use of the HISTORY
Tagline is solely based on [Opposer]’s advertising.”22 We find that neither Opposer’s
interrogatory answer nor Ms. Mechbal’s trial testimony fairly apprised Applicant that
Opposer was offering evidence in support of a claim of analogous trademark use.
Applicant’s interrogatory addressed the adoption of Opposer’s claimed mark.
Opposer’s response, referring to its advertising, merely indicates Opposer’s intent to
facilitate the sale of its watches. That might be relevant to a claim of technical
common law trademark rights (a ground on which Opposer states it does not rely). It

21 Opposer’s Rebuttal Brief, 37 TTABVUE 17 (citing to App 2nd NoR, 25 TTABVUE 9).
22 Id.
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would not alert Applicant to Opposer’s shift to a new, unpleaded ground for its
priority claim (analogous trademark use).
Ms. Mechbal’s trial testimony and exhibits discuss and make of record examples
of Opposer’s use of the HISTORY Tagline in a subsidiary, supportive role in ROLEX
watch advertising. Her testimony, at best, is ambiguous on the question of analogous
trademark use and cannot fairly be read to imply that Opposer was relying on this
ground to establish priority. See Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336,
222 USPQ 185, 187 (Fed. Cir. 1984) (“The board reviewed the record and found that
nothing in the transcript alerted [respondent] … that [petitioner] … intended to use
the [noted documentary evidence] … as a ground for cancellation. Our review of the
record confirms the board's conclusion.”); Micro Motion Inc. v. Danfoss A/S, 49
USPQ2d 1628, 1629 (TTAB 1998) (“The evidence allegedly bearing on mere
descriptiveness easily could be interpreted as going to genericness. Under such
circumstances, we cannot say that applicant was fairly apprised that the evidence
was being introduced in support of the unpleaded mere descriptiveness issue.”).
Consequently, we find that Opposer did not plead or place Applicant on notice during
discovery or trial that analogous trademark use was being litigated in this
Opposition.
2. Analogous Trademark Use Was Not Proven
Even were we to find that analogous trademark use was properly pleaded or tried
by consent of the parties, Opposer did not meet its burden of proving analogous
trademark use. Rather, Opposer – at all times shown in the record – used the
HISTORY Tagline in a subsidiary, supportive role in ROLEX watch advertising.
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ROLEX was shown as the mark designating the source of the watches, not the
advertising tagline.
“[O]ne may ground one’s opposition to an application on the prior use of a term in
a manner analogous to service mark or trademark use. … Such an ‘analogous use’
opposition can succeed, however, 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. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879,
1881 (Fed. Cir. 1996) (internal citations omitted). “Where, however, [the] … 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.” Id.
The mere fact that Opposer intended the HISTORY Tagline to function as a
trademark is insufficient. Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ 34,
39 (CCPA 1970) (“The mere fact that a combination of words or a slogan is adopted
and used by a manufacturer with the intent [that it function as a trademark] does
not necessarily mean that the slogan accomplishes that purpose in reality.”). “Before
a prior use becomes an analogous use sufficient to create proprietary rights, the
[opposer] must show prior use sufficient to create an association in the minds of the
purchasing public between the mark and the [opposer]’s goods. … [T]he activities
claimed to create such an association must reasonably be expected to have a
substantial impact on the purchasing public ….” Herbko, 64 USPQ2d at 1378. These
activities must be “sufficiently clear, widespread and repetitive to create the required
association in the minds of the potential purchasers between the mark as an indicator
Opposition No. 91242189
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of a particular source and the [product] … to become available later.” T.A.B. Sys., 37
USPQ2d at 1883.
Moreover, the “tacking” theory under which analogous trademark use operates
requires that actual technical trademark use must follow within a commercially
reasonable period of time. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1218
(TTAB 2007) (citing Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251
(TTAB 1995)); Shalom Children’s Wear Inc. v. In-Wear AIS, 26 USQP2d 1516, 1519
(TTAB 1993). See also Cohen, A.B., Intent to Use: A Failed Experiment?, 35 U.S.F. L.
Rev. 683, 690 (2001) (“[A] … [use analogous to trademark use] claim would be valid
as long as the opposer can also show actual commercial use within a reasonable
time.”); 1 Gilson, J., Gilson on Trademarks, § 3.04 (Matthew Bender & Company, Inc.
Sept. 2020 Update) (“Use analogous [to trademark use] can give an opposer priority
over an applicant for registration of the same mark, provided that the use analogous
is followed by actual use of the mark ‘within a commercially reasonable period of
time.’”).
From a review of the record, we find that Opposer consistently uses its ROLEX
mark as an indicator of source, but has not shown that its HISTORY Tagline “in and
of itself” serves to identify the source of its goods. See Textron Inc. v. Cardinal Eng’g
Corp., 164 USPQ 397, 399 (TTAB 1969). Opposer’s presentations of its HISTORY
Tagline do not show a substantial impact on the purchasing public, Herbko, 64
USPQ2d at 1378, sufficient to create the required association in the minds of the
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potential purchasers between the HISTORY Tagline and a particular source of
Opposer’s watches to become available later. T.A.B. Sys., 37 USPQ2d at 1883.
Except for a cessation of use from 2014-2015, Opposer promoted its HISTORY
Tagline from 2013-201923 in print and online magazine advertisements,24 in
connection with the sponsorship of sporting tournaments and cinema award events,25
in television and radio advertisements,26 on billboards,27 and in coop advertising with
its authorized dealers.28 Opposer’s promotional expenditures for these activities
during the stated time periods were in excess of $21 million.29 While Opposer’s
various uses of the HISTORY Tagline were repetitive, and might have been
widespread (a point on which the record leaves a degree of doubt), they were not
sufficiently clear to create the required association in the minds of the potential
purchasers between the HISTORY Tagline as an indicator of a particular source of
Opposer’s watches.
Representative examples of Opposer’s advertising using the HISTORY Tagline
appear below:

23 Opposer’s Answer to Interrogatory No. 2, App 2nd NoR, 24 TTABVUE 8-9.
24 Mechbal Decl., 16 TTABVUE 3-6, 12-32, 34-89, 174-188, 234-49, ¶¶ 6-10, 12-14, 19, Exhs.
1-2, 4, 8, 10; 17 TTABVUE 2-9, Exhs. 3, 12.
25 Id. at 5-7, 90-173, 189-233, ¶¶ 15, 17, 18, 20, Exhs. 5-7, 9.
26 Id. at 6-7, 137-140, 189-249, ¶¶ 17, 19-21, Exhs. 6, 9-10.
27 Id. at 5-7, 190-136, 174-188, 234-49, ¶¶ 15, 19, 21, Exhs. 5, 8, 10.
28 Id. at 7, 25-254, ¶ 22, Exh. 11.
29 Id. at 4-5, ¶¶ 11, 16; 17 TTABVUE 2-9, Exhs. 3, 12.
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Mechbal Decl., 16 TTABVUE 19 Mechbal Decl., 16 TTABVUE 32

Mechbal Decl., 16 TTABVUE 97
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Mechbal Decl., 16 TTABVUE 136
As these illustrative samples show, Opposer’s HISTORY Tagline advertising
uniformly includes a depiction of the ROLEX house mark in bright green lettering.
The ROLEX mark is clearly the most eye-catching presentation in each
advertisement. No matter the font size or style in which it is presented, the HISTORY
Tagline is always shown in a muted gray color. In a good portion of Opposer’s
marketing pieces made of record, the font size of the HISTORY Tagline is much
smaller than that of either the ROLEX mark or other textual matter on the page.
Compare Bose Corp. v. QSC Audio Prods., 63 USPQ2d 1303, 1306-07 (Fed. Cir. 2002)
(“consumer was presented with frequent references to the product mark standing
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alone and apart from the famous house mark in advertising and promotional
materials, allowing the consumer to disassociate the product mark from the house
mark”).
Opposer directs us to a 2013 online issue of FASHION PASSION, ranking ROLEX as
a top luxury brand and stating “Rolex doesn’t just tell time, it tells history.”30 The
intertwining of the ROLEX mark with the HISTORY Tagline in this fashion
reinforces that the HISTORY Tagline does not stand on its own as a representation
of source of Opposer’s watches.31
Opposer also makes much of a 2014 article appearing in an online publication
called MASHABLE, titled “Rolex: How a 109-Year-Old Brand Thrives in the Digital
Age,” stating that “[o]ne of the company’s best-received campaigns is a series of
commercials with the tag line, ‘It doesn't just tell time; it tells history.’”32 Reading
this quote in the context of the article in its entirety, it is clear that the content is
directed to the advertising industry, not to watch consumers.33 We therefore find this
article to be of low probative value. The test for determining acceptable analogous
trademark use “is directed at the actual perception of the potential consumers
of the [goods], not some hypothetical person or the intent of the marketer. … [I]t is

30 Opposer’s Brief, 32 TTABVUE 28; Opp 3rd NoR, 15 TTABVUE 44.
31 The same may be said of the third-party PINTEREST postings that Opposer made of record
(15 TTABVUE 75-82).
32 Opposer’s Brief, 32 TTABVUE 28; Opp 3rd NoR, 15 TTABVUE 52-70 (quote at 15
TTABVUE 67).
33 The same may be said of other third-party articles that Opposer made of record, such as
those appearing in ECRATER (15 TTABVUE 13-14), HORBITER (15 TTABVUE 15-38) and
BLND PR (15 TTABVUE 41-43).
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actual public perception that is required.” T.A.B. Sys, 37 USPQ2d at 1883 (emphasis
added).
We also find the undated Pinterest postings Opposer made of record to be
unhelpful, as they merely show republished versions of Opposer’s advertising bearing
the HISTORY Tagline with no further discussion.34 We further find the Internet blog
posts mentioning the HISTORY Tagline that Opposer provided to be of little value,
because all of them are subsequent to Applicant’s application priority date and the
readership volume and frequency of these blog posts were not supplied.35 Note,
Proving Ownership Online ... and Keeping It: The Internet’s Impact on Trademark
Use and Coexistence, 104 TMR 1275 (INTA 2020) (“A party attempting to prove use
analogous from online trademark use is well advised to show examples of how its
mark is used on the site, as well as the frequency of hits to the site, any advertising
responses and any business done by it during the relevant time.”).
Moreover, nowhere in the record is there evidence that Opposer ever made actual
technical (affixation) trademark use of the HISTORY Tagline at any time in the
6-year period that the mark has been in use. Westrex, 83 USPQ2d at 1218. Thus,
absent clear evidence of technical trademark use of the HISTORY Tagline within a
commercially reasonable time, Opposer has in any event not perfected its purported
analogous trademark use.

34 Pinterest postings, Opp 3rd NoR, 15 TTABVUE 75-82, 148-51.
35 Internet blogs, Opp 3rd NoR, 15 TTABVUE 83-146.
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We therefore find that Opposer has not demonstrated analogous trademark use of
the HISTORY Tagline sufficient to establish priority over Applicant’s STORY
Tagline. Central Garden, 108 USPQ2d at 1142 (“[T]he touchstone of analogous use is
a factual determination of whether the use of the mark has created in the minds of
the relevant public an association between the goods or services and their source.”).
V. Conclusion
Opposer established its entitlement to bring and maintain a statutory cause of
action for likelihood of confusion in this Opposition. However, Opposer neither
properly plead nor adequately proved its trademark priority. “We need not reach the
issue of likelihood of confusion because[,] without proof of priority, [O]pposer cannot
prevail.” Syngenta v. Bio-Chek, 90 USPQ2d at 1119.

Decision: The Opposition is dismissed.