A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for “now for then,” a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such as to bridge a gap in the chain of title where the proper paperwork is missing.

Cancellation Proceeding

In Narita Export LLC v. Adaptrend, Inc., Cancellation No. 92074784, 2022 USPQ2d 857 (TTAB Sept. 20, 2022), the issue of priority of use hinged on a nunc pro tunc assignment and an oral assignment.

Narita sought to cancel Adaptrend's TONOSAMA trademark registration (Reg. No. 5873672) for “gift baskets . . .” in Class 30 under Section 2(d) for likelihood of confusion with Narita's TONOSAMA trademark for confectionary and various snack foods.

As the petitioner, and not owning a U.S. registration, Narita had the burden of establishing priority. Hydro-Dynamics, Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023 (TTAB 2009). Adaptend asserted a first use date of June 13, 2016, while Narita claimed an allegation of use anywhere of March 27, 2016. But, unless Adaptrend can prove an earlier date of use than its underlying application filing date of March 27, 2019, Narita need only establish a first use date earlier than March 27, 2019 in order to prevail on priority. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140-41 (TTAB 2013).

Nunc Pro Tunc Assignment to Establish Priority

Here, Narita's priority date of March 27, 2016 was based on the use of the mark by the prior owner, so Narita had to establish a chain of title to establish its entitlement to that earlier date. See W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.2d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“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 original trademark owner, TI Express, allegedly selected and created the TONOSAMA mark and logo, and had its first sale of “TONOSAMA branded candy and snack foods in the U.S. on March 27, 2016.”

Narita filed Application Serial No. 88665122 for the TONOSAMA mark on October 23, 2019. The application claimed an allegation of use anywhere of March 27, 2016.

On October 20, 2020, TI Express executed a nunc pro tunc trademark assignment to Narita with an effective date of November 25, 2016, memorializing an “oral agreement” assigning the TONOSAMA mark to Narita along with the goodwill associated with the mark.

Although the documentary evidence was minimal with respect to sales of candy subsequent to March 2016 date of first use, the declarations were sufficient to trace the use in commerce of Narita's TONOSAMA mark with candy back to March 27, 2016, which is earlier than the priority dates asserted by Adaptrend.

With Narita having established priority, the TTAB found a likelihood of confusion because the marks were identical, the goods overlapped, and traveled in the same channels of trade. The TTAB granted summary judgment, stating “Registration No. 5873672 will be cancelled in due course.”

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.