The Nest Nail Spa v. Tracy D. Frye

This Opinion is Not a
Precedent of the TTAB
Mailed: March 9, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
The Nest Nail Spa LLC
v.
Tracy D. Frye
_____
Cancellation No. 92085180
_____
Taylor V. Williams, of Williams Law, for The Nest Nail Spa LLC.
Robert R. Waters, of Waters Law Group PLLC, for Tracy D. Frye.
_____
Before Heasley, Cohen, and O’Connor,
Administrative Trademark Judges.
Opinion by O’Connor, Administrative Trademark Judge:
Tracy D. Frye (“Respondent”) owns registrations on the Principal Register for
THE NEST, in standard characters, for:
beauty spa services, namely, cosmetic body care; day spa
services, namely, nail care, manicures, pedicures and nail
enhancements; health spa services for health and wellness
of the body and spirit; health spa services for health and
wellness of the mind, body and spirit; health spa services,
namely, cosmetic body care services; health spa services,

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namely, providing weight loss programs, in International
Class 44,1
and THE NEST DAY SPA and design (with DAY SPA disclaimed) in the following
form for:
beauty spa services, namely, cosmetic body care; day spa
services, namely, nail care, manicures, pedicures and nail
enhancements; health spa services for health and wellness
of the body and spirit; health spa services for health and
wellness of the mind, body and spirit; Health spa services,
namely, cosmetic body care services; health spa services,
namely, providing weight loss programs; medical spa
services, namely, minimally and non-invasive cosmetic and
body fitness therapies, also in International Class 44.2
The Nest Nail Spa LLC (“Petitioner”) seeks cancellation of Respondent’s
registrations under 15 U.S.C. § 1064 on the grounds of (1) priority and likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its
1 Registration No. 6808525 issued August 2, 2022, from an application filed on July 21, 2021
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on a claim of first use
anywhere at least as early as July 1, 2021 and first use in commerce at least as early as July
9, 2021.
2 Registration No. 6812713 issued August 9, 2022, from an application filed on July 19, 2021
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on a claim of first use
anywhere at least as early as July 1, 2021 and first use in commerce at least as early as July
9, 2021.
The mark description states that “[t]he mark consists of a partial outline of a woman seated
on the ground showing the right side of her face and her left arm resting on her left knee and
her right leg tucked underneath her, with flowers and plants on both sides of her, all above
the wording ‘THE’ above the wording ‘NEST’ above the wording ‘DAY SPA.’”

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alleged prior common-law use of THE NEST NAIL SPA for nail care salons, nail care
services and pedicure services, and (2) Respondent’s lack of ownership of the marks
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), rendering the
underlying applications void ab initio.
In its answer, Respondent admitted some of the salient allegations of the petition
for cancellation, as discussed below, and denied other allegations.3
The case is fully briefed. For the reasons that follow, we grant the petition for
cancellation on the ground of priority and likelihood of confusion. We do not reach the
ground asserting that Registrant is not the rightful owner of the marks.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of Respondent’s involved Registrations. During its
testimony period, Petitioner submitted the Testimony Declaration of Brenna Massa,
3 Respondent also asserted four “defenses.” 5 TTABVUE 2-3, 9. The first and second defenses
merely deny that Petitioner has been damaged or state that the petition fails to state a claim
for which relief can be granted and are not true affirmative defenses. Shenzhen IVPS Tech.
Co. Ltd. v. Fancy Pants Prods., LLC, No. 91263919, 2022 TTAB LEXIS 383, at *4-5 n.5. The
third defense, that “[t]he Petition for Cancellation is barred, in whole or in part, to the extent
that discovery shows that the Petitioner’s alleged mark is invalid or that the mark is not
properly being used in commerce, or by the doctrine of unclean hands,” is merely an attempt
to reserve potential defenses, which is impermissible because it does not provide a plaintiff
fair notice of such defenses. See, e.g., Philanthropist.com, Inc. v. Gen. Conf. Corp. of the
Seventh-Day Adventists, No. 92065178, 2021 TTAB LEXIS 205, at *5 n.5.
Respondent’s fourth defense asserts that “[t]he Petition for Cancellation should be denied
because the Petitioner’s mark is not qualified for federal registration because the alleged
mark is not being used in interstate commerce.” 5 TTABVUE 9. To the extent this sounds in
the nature of an affirmative defense by purporting to assert matter that would defeat the
claim even if Petitioner’s allegations are accepted as true, it must fail on the merits because
there is no requirement in Trademark Act Section 2(d) that a mark previously used by
another be used in interstate commerce or qualify for federal registration. See infra at 14-15.

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founder and managing member of Petitioner, with exhibits A-L (6 TTABVUE) and its
Notice of Reliance (7 TTABVUE) on official records and Respondent’s responses to
Petitioner’s Requests for Admission, Interrogatories and Document Requests.4
Respondent did not submit any evidence.
II. Entitlement
Although the parties do not dispute Petitioner’s entitlement to a statutory cause
of action,5 it must be established by the plaintiff in every inter partes case. Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1373 (Fed. Cir.
2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 n.4 (2014)). A party in the position of plaintiff may petition to cancel a registration
of a mark when such proceedings are within the zone of interests protected by the
statute and the plaintiff has a reasonable belief in damage that is proximately caused
4 Because the files of Respondent’s registrations are automatically of record pursuant to
Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), Petitioner did not need to submit copies
with its notice of reliance.
Respondent’s responses to Petitioner’s requests for admission include denials. We consider
only Respondent’s admissions, as denials to requests for admission are not admissible. Life
Zone Inc. v. Middleman Grp., Inc., No. 91160999, 2008 TTAB LEXIS 37, at *10 n.10 (denials
of requests for admission not admissible; the denial of a request for admission establishes
neither the truth nor falsity of the assertion, but leaves it for proof at trial). In addition,
written responses to requests for production of documents introduced through a notice of
reliance are admissible only to show that a party has stated there are no responsive
documents, as Respondent did in certain of its responses. 15 TTABVUE 139-62. McGowen
Precision Barrels, LLC v. Proof Research, Inc., No. 92067618, 2021 TTAB LEXIS 167, at *8
n.6. Neither party discusses non-production of documents in its brief, so these responses have
no bearing on our decision.
5 See 9 TTABVUE 15-16 (stating that Respondent does not dispute that Petitioner has
standing (now referred to as entitlement)).

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by ongoing registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
1303 (Fed. Cir. 2020).
“Under Trademark Act Section 14, 15 U.S.C. § 1064, ‘any person who believes that
he is or will be damaged … by the registration of a mark on the principal register’
may petition to cancel that registration. A party in the position of plaintiff may
petition to cancel registration of a mark when such cancellation is within the zone of
interests protected by the statute, 15 U.S.C. § 1064, and the plaintiff has a reasonable
belief in damage that is proximately caused by registration of the mark.” JNF LLC v.
Harwood Int’l Inc., No. 92070634, 2022 TTAB LEXIS 328, at *5 (citing Meenaxi
Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1072 (Fed. Cir. 2022) (citing Lexmark,
572 U.S. at 132; Corcamore, 978 F.3d at 1303-04)). Accord Curtin v. United
Trademark Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025).
In its petition for cancellation, Petitioner alleged that it has continuously used the
mark THE NEST NAIL SPA in interstate commerce in the United States since before
the earliest priority date on which Respondent may rely, and that Respondent’s
marks are likely to cause confusion with Petitioner’s mark, causing damage to
Petitioner.6 Further, Petitioner’s witness testified that Petitioner has used the mark
THE NEST NAIL SPA in connection with nail care salons; nail care services; and
pedicure services since 2014.7 This testimony of Petitioner’s use of the pleaded mark
6 See, e.g., 1 TTABVUE 5, 7, 9-10, ¶¶ 2, 20, 23, 34-46.
7 6 TTABVUE 4-5 (Massa Decl. ¶ 2). We note that Exhibit I to the Massa Declaration includes
a list of customers with addresses redacted, but other information such as names unredacted.
Should Petitioner wish to redact additional information, such as last names, it may file a
redacted version of the Declaration within thirty days of the mailing date of this decision,

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supports its entitlement to a statutory cause of action. See, e.g., Swiss Grill Ltd. v.
Wolf Steel Ltd., No. 91206859, 2015 TTAB LEXIS 312, at *23 (testimony that
opposers were using mark established a real interest in the proceeding and a
reasonable basis for belief in damage caused by applicant’s registration of its
mark); Syngenta Crop Prot., Inc. v. Bio-Chek, LLC, No. 91175091, 2009 TTAB LEXIS
70, at *15-16 (testimony that party uses mark sufficient to support its allegations of
a reasonable belief in damage from registration).
Petitioner also alleges that its mark is the subject of a pending application, Serial
No. 97790518, which has been refused registration due to confusing similarity with
the marks in Respondent’s registrations.8 Petitioner’s pleaded application is not
automatically part of the record under Trademark Rule 2.122(b), and Petitioner failed
to submit a copy of the application during its testimony period. In its Answer,
however, Respondent admitted Petitioner’s allegation that its application was
refused registration due to Respondent’s registration.9 Respondent conceded in its
brief, “[t]he record in this case also establishes that Petitioner’s application has been
appropriately refused registration under Trademark Act Section 2(d) based on the
Respondent’s two registered trademarks.”10 Respondent’s admission and concession
establish that Petitioner is the owner of a pending application for THE NEST NAIL
failing which the entire Declaration, with its current redaction of addresses, will remain
public.
8 1 TTABVUE 8, ¶ 27.
9 See 5 TTABVUE 6, ¶ 27.
10 See 9 TTABVUE 15-16.

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SPA which has been refused due to a likelihood of confusion with the marks in
Respondent’s registrations. Cf. WeaponX Performance Prods. v. Weapon X
Motorsports, Inc., No. 91221553, 2018 TTAB LEXIS 72, at *20.
Petitioner has thus demonstrated its entitlement to a statutory cause of action
based on likelihood of confusion. See Empresa Cubana del Tabaco v. General Cigar
Co., 753 F.3d 1270, 1275 (Fed. Cir. 2014) (plaintiff entitled to statutory cause of action
based on USPTO’s refusal of its application due to defendant’s registrations); Monster
Energy Co. v. Lo, No. 91225050, 2023 TTAB LEXIS 14, at *16 (finding entitlement
based on common law use of mark alleged to be confusingly similar). Because
Petitioner has established its entitlement to a statutory cause of action on its Section
2(d) claim, it may assert any other ground that would bar registration of Respondent’s
marks. See, e.g., Hole in 1 Drinks, Inc. v. Lajtay, No. 92065860, 2020 TTAB LEXIS 9,
at *10 (once entitlement is shown on one ground, plaintiff has right to assert any
other ground).
III. Petitioner’s Section 2(d) Claim
Section 2(d) of the Trademark Act bars the registration of a mark that
[c]onsists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a
mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
15 U.S.C. § 1052(d). Petitioner does not plead ownership of a prior registration. To
prevail on the ground of likelihood of confusion under Section 2(d) based on common
law rights in a mark, it is Petitioner’s burden to prove by a preponderance of the

Cancellation No. 92085180
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evidence both priority of use and likelihood of confusion. WeaponX Performance
Prods., 2018 TTAB LEXIS 72, at *21 (citing inter alia Cunningham v. Laser Golf
Corp., 222 F.3d 943, 951 (Fed. Cir. 2000)); see also Hydro-Dynamics Inc. v. George
Putnam & Co., 811 F.2d 1470, 1471 (Fed. Cir. 1987).
A. Likelihood of Confusion Not Contested
At the outset, we note that there is no dispute with respect to the issue of
likelihood of confusion between Petitioner’s mark, THE NEST NAIL SPA, on the one
hand, and Respondent’s marks, THE NEST and THE NEST DAY SPA and design,
on the other. In its trial brief, Respondent states:
In this matter, the likelihood of confusion is not contested.
Both Petitioner and Respondent have consistently noted
the likelihood of confusion, and the Trademark Examiner
who denied the Petitioner’s application clearly agrees.…
The Petitioner included an extensive likelihood of
confusion section in the Opening Brief, including a full du
Pont factors analysis, which the Registrant believes is
unnecessary in that likelihood of confusion is not a
contested issue.11
True to this statement, Respondent does not address any of the DuPont factors in
its brief. Further, in its answer, Respondent admitted Petitioner’s allegations that
“Petitioner’s mark, THE NEST NAIL SPA, and Registrant’s Marks are identical or
highly similar in appearance or commercial impression” and that “[Respondent’s]
11 9 TTABVUE 16. See also id. at 14 (“The Petitioner’s unregistered mark and the two
Registered marks are very similar in both appearance and general commercial impression.
The Petitioner’s service offering is much more limited, as it only consists of pedicures and
manicures, while the Registrant offers a full line of spa services. However, the parties agree
that the overlap in services gives rise to a likelihood of confusion.”).

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goods and services for the NEST Marks and Petitioner’s services are very similar
and/or overlapping.”12 By conceding that it does not contest Petitioner’s assertion of
a likelihood of confusion, and not defending against likelihood of confusion at trial,
Respondent has conceded that there is a likelihood of confusion between the
respective marks, should Petitioner prevail on the issue of priority.13
B. Priority
We thus turn to the only remaining issue in resolving Petitioner’s Section 2(d)
claim: priority. “[A] party petitioning for cancellation under section 2(d) must show
that it had priority and that registration of the [new] mark creates a likelihood of
confusion” with the petitioner’s earlier mark. Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 1162 (Fed. Cir. 2002). “To establish priority, the petitioner must show
proprietary rights in the mark that produce a likelihood of confusion.” Id. (citing Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (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.” Id. Accord
12 See 1 TTABVUE 9, ¶¶ 38-39 and 5 TTABVUE 7, ¶¶ 38-39.
13 Even without this concession or Respondent’s admissions, the record amply supports a
likelihood of confusion in view of the similarity of the marks, each of which features the
dominant source-identifying element THE NEST, and the overlapping nail care and pedicure
services, which are presumed to travel in the same channels of trade to the same consumers.
See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (listing factors to
be considered in determining likelihood of confusion); see also In re Chatam Int’l Inc., 380
F.3d 1340, 1341-42 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and differences
in the marks.”).

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Araujo v. Framboise Holdings Inc., 99 F.4th 1377, 1380 (Fed. Cir. 2024) (“The party
opposing registration of a similar mark may establish priority of its mark based on
prior use.”).
The common law mark must be distinctive, inherently or by acquired
distinctiveness, and Petitioner’s use must be before the earliest priority date of
Respondent. See Otto Roth, 640 F.2d at 1321. Based on the record, we find that THE
NEST NAIL SPA as a whole is inherently distinctive because THE NEST has no
apparent descriptive or generic significance with respect to the services and there is
no argument or evidence of record to indicate otherwise. See DC Bus. Improvement
Dist. v. Clarke, No. 91275100, 2024 TTAB LEXIS 412, at *37; Giersch v. Scripps
Networks, Inc., No. 92045576, 2009 TTAB LEXIS 72, at *9 (“Respondent has not
raised an issue as to the distinctiveness of petitioner’s mark or otherwise put
petitioner on notice of this defense, and therefore we find that the mark is
distinctive.”).
a. Respondent’s Earliest Priority Date
The underlying applications for Respondent’s THE NEST and THE NEST DAY
SPA and design marks were filed on July 21, 2021 and July 19, 2021, respectively.
Respondent did not submit any evidence of earlier use of its marks and admitted in
discovery that it did not use the marks with the identified services at any time before
2021.14 “It is well settled that in the absence of any evidence of earlier use, the earliest
14 See 7 TTABVUE 37, 39 (Responses to Petitioner’s Requests for Admission Nos. 1, 6).
Petitioner’s Notice of Reliance includes documents produced by Respondent in discovery that
reference activity relating to its marks from earlier in 2021. See 7 TTABVUE 67-97. Some of

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date upon which respondent may rely is the filing date of its underlying
application.” Giersch, 2009 TTAB LEXIS 72, at *8 (citing Trademark Act Section
1057(c); 15 U.S.C. § 1057(c)); see also Cent. Garden & Pet Co. v. Dosckill Mfg. Co., No.
91188816, 2013 TTAB LEXIS 439, at *13 (TTAB 2013) (“when an application or
registration is of record, the party may rely on the filing date of the application for
registration, i.e., its constructive use date”).
C. Petitioner’s Prior Trademark Use
As noted, under Section 2(d), Respondent’s marks may not be registered if, before
Respondent’s earliest priority date of July 19, 2021, Petitioner’s mark was “used in
the United States ... and not abandoned.” Trademark Act, 15 U.S.C. § 1052(d).
Petitioner contends that it has priority of use because it began using the mark THE
NEST NAIL SPA in connection with nail care salons, nail care services, and pedicure
services at least as early as 2014, well before Respondent’s earliest priority date.15
In support, Petitioner submitted the declaration of Brenna Massa, its founder and
managing member, who testified that Petitioner has continuously used the mark
THE NEST NAIL SPA in connection with such services since at least as early as
January 29, 2014.16 Ms. Massa provided corroborating evidence, including:
these documents, such as emails and sales records, are not of the type that may be made of
record by way of notice of reliance, and there is no admission or stipulation authenticating
the documents. See Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii). And even if we
were to consider these documents for what they show on their face (or, for that matter, for
their truth), the documents would not prove use of Respondent’s marks before 2021.
15 See 8 TTABVUE 14.
16 6 TTABVUE 4-5 (Massa Dec. ¶ 2).

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• Copies of Petitioner’s business formation documents that she filed on April
21, 2013, along with Petitioner’s Certificate of Good Standing from the
Colorado Secretary of State’s website dated April 7, 2025.17
• Copy of an article in THE DENVER POST published on November 19, 2014
featuring Petitioner and referring to its provision of services under THE
NEST NAIL SPA.18
• Screenshot of a post on Petitioner’s Instagram account dated February 10,
2014 offering Valentine’s Day pedicure with photograph of storefront
showing signage using the mark THE NEST NAIL SPA and a sign reading
“now open.”19
• Screenshots of social media posts from June 26, 2018 announcing
Petitioner’s opening of a second location offering services under THE NEST
NAIL SPA including photograph showing THE NEST NAIL SPA mark on
door.20
• Screenshots of customer reviews of The Nest Nail Spa posted on online
public booking and review platform Vagaro between 2014 and 2025.21 The
reviews refer to services provided including manicures, pedicures and nail
art.
Ms. Massa’s testimony was definite, detailed, uncontroverted and supported by
evidence. It establishes that Petitioner used its mark THE NEST NAIL SPA in the
United States in connection with the rendering of nail care salon services, nail care
services and pedicure services beginning in 2014, well before Respondent’s earliest
priority date of July 19, 2021. See Araujo, 99 F.4th at 1381 (“[O]ral testimony, if
sufficiently probative, is normally satisfactory to establish priority of use in a
trademark proceeding….”) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., Inc.,
341 F.2d 127, 130 (CCPA 1965)). See also Exec. Coach Builders, Inc. v. SPV Coach
Co., No. 91212312, 2017 TTAB LEXIS 201, at *36 (“Oral testimony is strengthened
17 Id. at 5, 13-17 (Massa Dec. ¶ 4 and Ex. A).
18 Id. at 5-6, 18-20 (Massa Dec. ¶ 5 and Ex. B).
19 Id. at 6, 21-22 (Massa Dec. ¶ 6 and Ex. C).
20 Id. at 6-7, 23-26 (Massa Dec. ¶¶ 7-9 and Exs. D-E).
21 Id. at 7, 89-194 (Massa Dec. ¶ 9 and Ex. F).

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by corroborative documentary evidence.”) (citing Elder Mfg. Co. v. Int’l Shoe Co., 194
F.2d 114 (CCPA 1952)).
Respondent does not dispute that Petitioner made such use or claim that
Petitioner has abandoned its mark. Instead, Respondent argues that Petitioner’s use
was not sufficient to establish priority because it was not in interstate commerce.
Respondent further contends that Petitioner did not plead or prove analogous use,
and cannot show that its mark achieved widespread public identification before
Respondent’s priority date as would be needed for analogous use.22 Respondent
argues that
The Petitioner cannot successfully cancel the Registrant’s
two registered trademarks in question because the
Petitioner cannot meet the standard required by Section
2(d) of the Lanham Act. The use of the Petitioner’s mark
was limited to a small area in the vicinity of Lakewood
Colorado, and the Petitioner offers no evidence to support
a legitimate “analogous use” cancellation argument.
Moreover, the Petitioner waived an argument for
cancellation due to analogous use/widespread public
identification, because the Petitioner did not bring the
claim in its Petition to Cancel, and did not address it in its
Opening Brief. Aside from waiver, it is also clear the
Petitioner cannot meet the well-known standard for
analogous use as it has no evidence to sustain the
argument.23
Respondent’s entire argument relies on a faulty legal premise, that use in
commerce is required for priority under Trademark Act Section 2(d). This is not the
law. Although use in commerce can suffice, Section 2(d) only requires that Petitioner’s
22 9 TTABVUE 11-12.
23 Id. at 15.

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mark have been “previously used in the United States” and “not abandoned.” See 35
U.S.C. § 1052(d). Accordingly, as made clear by our primary reviewing court, a party
claiming priority based on common law rights may rely on intrastate use of a mark:
Were failure to show ‘use in commerce’ a bar to petitioning
for cancellation of a registration, a party could never cancel
a mark based solely on intrastate use. This is not the law.
Section 14 [through Section 2(d)] requires only prior use;
‘in commerce’ is noticeably absent.
First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Grp., Inc., 476 F.3d 867, 870-71
(Fed. Cir. 2007) (quoting Nat’l Cable Television Assoc. Inc. v. Am. Cinema Editors
Inc., 937 F.2d 1572, 1578 n.4 (Fed. Cir. 1994)). This is reflected in multiple Board
decisions over many decades. See, e.g., Tex. DOT v. Tucker, No. 92030882, 2010 TTAB
LEXIS 36, at *18-19 (even if petitioner did not make significant use of mark outside
of Texas, this would not aid respondent because “prior significant use in Texas, a use
not in genuine dispute, is sufficient”); Panda Travel, Inc. v. Resort Option Enters., No.
91174767, 2009 TTAB LEXIS 708, at *18 (“Section 2(d) only requires prior use; it
does not require use in commerce. Accordingly, an opposer claiming priority may rely
on intrastate use.”) (citing First Niagara, 476 F.3d at 871); L. & J.G. Stickley Inc. v.
Cosser, No. 92040202, 2007 TTAB LEXIS 2, at *26-27 (TTAB 2007) (intrastate use of
petitioner’s mark is sufficient to establish priority); Maids to Order of Ohio, Inc. v.
Maid-to-Order, Inc., No. 92040571, 2006 TTAB LEXIS 106, at *33 (“Priority may be
based on intrastate use of a mark”); Plymouth Cordage Co. v. Solar Nitrogen Chems.,
Inc., 1966 TTAB LEXIS 196, at *7 (although petitioner’s “prior use was in intrastate
commerce, such use is sufficient to preclude the registration of the same or a similar

Cancellation No. 92085180
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mark for like or similar goods by a subsequent user, notwithstanding that the later
user may have been the first to engage in interstate commerce”).
Thus, whether or not Petitioner’s prior use took place solely within Colorado is
irrelevant. Corporate Document Servs. v. I.C.E.D. Mgmt., No. 91102651, 1998 TTAB
LEXIS 367, at *7 (“[W]hether or not this prior use is strictly intrastate in nature is
inconsequential. While interstate use is a prerequisite to federal registration … rights
in the mark itself are not dependent upon interstate use. It is well established that
rights in and to a trademark are created by use of the mark in either intrastate or
interstate commerce.”).24
Also irrelevant is Respondent’s charge that Petitioner waived its claim of
analogous use and cannot prove the elements thereof; Petitioner did not need to rely
on analogous use, given its showing of technical service mark use before Respondent’s
earliest possible priority date. Before launching into its discussion of analogous use,
Respondent acknowledges that a claim under Trademark Act Section 2(d) can be
based on ownership of a registration “or a mark or trade name previously used in the
United States by another and not abandoned.”25 However, Respondent goes on to
24 We note that Petitioner has submitted evidence that it provides services to customers
residing outside of Colorado but we express no opinion on whether Petitioner’s activities are
sufficient to support a federal registration because that question that is not before us in this
proceeding. See Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 995 (Fed.
Cir. 2016) (“Because one need not direct goods across state lines for Congress to regulate the
activity under the Commerce Clause, there is likewise no such per se condition for satisfying
the Lanham Act’s ‘use in commerce’ requirement.”).
25 9 TTABVUE 22 (stating further that “[i]n an opposition founded on Section 2(d), the
opposer must establish its own prior proprietary rights in the same or a confusingly similar
designation in order to defeat the application”) (citation omitted).

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state “[i]n this case, the Petitioner has no registered mark, so in order to advance a
Section 2(d) argument, the Petitioner must meet the strict requirement to show
‘analogous use’ of its unregistered mark in order to meet the standard.”26
Respondent’s attempt to sweep aside Petitioner’s arguments and evidence
showing actual use of its mark and shift the focus to an unpled (and unnecessary)
analogous use claim is not well taken. Even cases cited by Respondent are clear that
analogous use is just one of several alternative ways to establish common law
priority. See T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1374 n.2 and 1378 (Fed.
Cir. 1996) (vacating grant of summary judgment on analogous use grounds but
remanding for consideration of claim of actual use); Nat’l Cable TV Ass’n, 937 F.2d at
1578 (petitioner did not need to show use of ACE as a service mark because “[p]rior
public identification of petitioner with the name ACE for awards from use analogous
to service mark usage is a sufficient ground for cancellation”).
We find that Petitioner has shown priority of use. Because likelihood of confusion
is undisputed and supported by the record, Petitioner has established its claim for
cancellation under Trademark Act Section 2(d).
26 Id.

Cancellation No. 92085180
- 17 -
Decision:
We grant the petition for cancellation of Registration No. 6808525 for THE NEST
and Registration No. 6812713 for under Trademark Act Section 2(d), 15
U.S.C. § 1052(d). Because we grant the petition for cancellation based on Petitioner’s
claim of priority and likelihood of confusion, we need not reach Petitioner’s second
ground for cancellation, that the applications underlying Respondent’s registrations
are void ab initio. See Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, No.
91167237, 2007 TTAB LEXIS 1, at *24.
Registration Nos. 6808525 and 6812713 will be cancelled in due course.