## Facts

- AT&T filed an intent-to-use application on January 11, 1990 to register DATACEL for a portable cellular data transmission and reception system integrating a cellular transceiver with a protocol modem.
- Zirco alleged common-law rights in DATACELL for a cellular adapter linking telephone equipment to a cellular telephone.
- Zirco alleged first use of DATACELL in commerce since about April 15, 1990 and claimed nationwide common-law rights.
- Zirco alleged it adopted and used DATACELL without actual knowledge of AT&T’s intent-to-use application.
- After AT&T’s application was published, Zirco filed a notice of opposition alleging likely confusion based on similarity of the marks and relatedness of the goods.
- AT&T moved to dismiss for failure to state a claim, asserting that Lanham Act § 7(c) gives an intent-to-use applicant constructive use and a priority date as of the filing date, contingent on registration.

## Issues

1. Whether an opposer who began using its mark after an applicant’s intent-to-use filing date can state a claim for damage and priority in an opposition proceeding before the applicant’s registration issues.
2. Whether Lanham Act § 7(c) constructive use (conditioned on registration) bars an opposition at the pleading stage when the opposer’s pleaded first-use date is later than the applicant’s filing date.

## Decision

- The TTAB granted AT&T’s Rule 12(b)(6) motion to dismiss.
- The opposition was dismissed without prejudice.
- The Board treated § 7(c) as conferring a conditional right of priority dating from the ITU application filing, such that Zirco’s later pleaded first use could not establish priority over AT&T for purposes of the opposition.

## Legal Principles

- Under Lanham Act § 7(c), filing an intent-to-use application constitutes constructive use that confers a right of priority as of the filing date, contingent upon registration.
- In an opposition, an opposer who pleads first use after the applicant’s ITU filing date does not state a viable priority-based claim against the applicant where the opposer relies solely on intervening post-filing common-law use.
- Dismissal without prejudice resolves pleading sufficiency in light of § 7(c) but does not adjudicate likelihood of confusion on the merits or foreclose other potential avenues of relief if circumstances later change.

## Conclusion

The TTAB held that an ITU applicant’s conditional priority under § 7(c) is measured from the filing date for opposition purposes, so an intervening user whose pleaded first use postdates that filing cannot maintain a priority-based opposition; the Board therefore dismissed the opposition without prejudice.


Zirco Corp. v. Am. Tel. & Tel. Co., 21 U.S.P.Q.2d 1542 (T.T.A.B. 1991)