## Facts

- Talk To Me Programs, Inc. (TTMP) produced water guns and filed a Lanham Act § 1(b) intent-to-use (ITU) application to register “THE TOTALLY RAD SOAKER” for toy water guns.
- After TTMP filed its ITU application, Larami Corporation began using “SUPER SOAKER” for its water guns.
- Larami filed an opposition at the Trademark Trial and Appeal Board (TTAB) against TTMP’s ITU application.
- TTMP filed a civil action against Larami for trademark infringement, arguing Larami’s first use was later than TTMP’s constructive-use date based on TTMP’s ITU filing.
- The district court granted summary judgment to Larami, concluding TTMP’s mark was merely descriptive and dismissing TTMP’s claims with prejudice.
- In that civil action, the court also rejected TTMP’s attempt to rely on Lanham Act § 7(c) constructive-use priority because constructive use is contingent on an issued registration, and TTMP had not obtained a registration.
- The court further found TTMP’s asserted pre-Larami activity (including a single sale) was insufficient to establish priority by actual trademark use.
- The United States Court of Appeals for the Second Circuit affirmed.
- After the civil litigation ended, Larami moved for summary judgment in the TTAB opposition based on the federal court rulings.

## Issues

1. Whether the federal court judgment resolving priority and descriptiveness entitled Larami to summary judgment in the TTAB opposition, barring TTMP from relitigating those determinations.
2. Whether an ITU applicant may claim enforceable priority over a later user based solely on § 7(c) constructive use before the mark has registered.
3. Whether “THE TOTALLY RAD SOAKER” (and “SOAKER” as applied to toy water guns) is merely descriptive and therefore not registrable absent acquired distinctiveness.

## Decision

- The TTAB granted Larami’s motion for summary judgment.
- The TTAB sustained the opposition and refused registration of “THE TOTALLY RAD SOAKER.”
- The TTAB relied on the prior federal decisions that TTMP could not establish priority by actual use and could not claim § 7(c) constructive-use priority without an issued registration.
- The TTAB accepted the federal courts’ determination that the applied-for mark was merely descriptive for toy water guns and lacked the showing needed to support protectable rights.

## Legal Principles

- The TTAB may give preclusive effect to issues actually litigated and decided in a final federal court judgment between the same parties, including determinations bearing on priority and distinctiveness.
- Lanham Act § 7(c) constructive-use priority for an ITU application vests only upon registration; filing alone does not create enforceable priority against another party’s use.
- Priority based on use requires bona fide trademark use in commerce; isolated or minimal transactions may be inadequate to establish priority.
- A merely descriptive mark is not registrable on the Principal Register without proof of acquired distinctiveness (secondary meaning).

## Conclusion

The TTAB refused registration of THE TOTALLY RAD SOAKER because the completed federal litigation had already determined that TTMP could not prove priority by actual use, could not rely on constructive-use priority under § 7(c) without a registration, and sought protection for a merely descriptive designation for toy water guns.


Larami Corp. v. Talk To Me Programs, Inc., 36 U.S.P.Q.2d 1840 (1995)