T.A.B. Systеms (T.A.B.) filed this timely appeal from the August 29, 1994 decision of the Trademark Trial and Appeal Board (Board) sustaining PacTel Teletrac’s (PacTel) opposition to registration of T.A.B.’s mark, TELETRAK, on the Principal Register. PacTel Teletrac v. T.A.B. Sys., 32 USPQ2d 1668 (TTAB 1994). The Board granted Pac-Tel’s motion for summary judgment, concluding that the undisputed evidence of record clearly established that PacTel had used the designation TELETRAC in a manner analogous to service mark use prior to T.A.B.’s earliest-claimed priority dаte. The appeal was argued on October 31, 1995. Because the undisputed evidence of record does not establish that PacTel is entitled to judgment as a matter of law on the basis of prior analogous use, we vacate the Board’s decision and remand the case for further proceedings consistent with this opinion.
BackgRound
PacTel provides vehicle fleet tracking and lost vehicle recovery services under the TELETRAC mark. PacTel’s services use satellites to track motor vehicles within a set geographic area. T.A.B. offers a similar lost and found retrieval service under the TEL-ETRAK mark. T.A.B.’s subscribers place tags on their property, each tag bearing a registration number and a “1-800” telephone number. Any person who finds an item lost by a subscriber can call the telephone number on the tag to report the item’s recovery. T.A.B. then contacts the subscriber to arrange for the return of the item.
T.A.B. filed an application to register the TELETRAK mark in February 1991. Pac-Tel opposed the application, alleging (a) that it had used the term TELETRAC in a manner analogous to a service mark since June 2, 1989, and as an actual service mark since November 1, 1990; (b) that both these dates were prior to T.AB.’s actual date of first use in commerce, or any other date on which T.A.B. could rely for priority purposes; and (c) that there is a likelihood of confusion between the parties’ marks as applied to their respective services. 1 Id. at 1669. T.A.B. conceded the existence of a likelihood of confusion but contested PaeTel’s assertion of priority rights in the TELETRAC mark sufficient to bar registration of T.A.B.’s mark. Specifically, T.A.B. argued (a) that its October 1989 post card mailing to a national sample of locksmiths was a valid “use in commerce” giving T.A.B. priority over Pac-Tel’s November 1990 service mark use; (b) that PacTel could not rely on a “prior analogous use” theory because it was not yet rendering the tracking services during the period of allegedly analogous use; and (c) that, if the theory were available to PacTel, its use of the term TELETRAC in 1989 was, inter alia, insufficiently “open and notorious” to create proprietary rights therein. Id. at 1670.
Disposing of the case on cross-motions for summary judgment, the Board concluded that PacTel had used the TELETRAC mark in a manner analogous to service mark use since June 1989, thereby giving PacTel a priority date earlier than T.A.B.’s earliest priority date
(ie.,
October 1989). First, after a detailed review of its prior decisions in the analogous use area, the Board rejected T.AB.’s contention that PacTel could not make out' analogous use during a period when it provided no services. According to the Board, “[cjommercial availability of the services is not a legal prerequisite to a claim of analogous use priority; the existence of such priority depends on the facts of each case.”
Id.
at 1674. Next, the Board rehearsed the following undisputed facts per
T.A.B. appeals from the Board’s decision, contending that the Board erred in concluding that commercial availability of the underlying service is not a legal prerequisite to a claim of analogous use priority. Moreover, according to T.A.B., even if one assumes that commercial availability is not a prerequisite to an analogous use claim, PaсTel’s evidence of analogous use is legally insufficient to support the Board’s conclusion that PacTel was entitled to a June 1989 priority date. We agree with the latter contention.
STANDARD OF REVIEW
In reviewing whether the Board correctly granted PacTel’s motion for summary judgment, we reapply the legal standard of Federal Rule of Civil Procedure 56(c) to the evidence of record, according to which summary judgment is proper where there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law.
Action Temporary Servs., Inc. v. Labor Force, Inc.,
Analysis
Section 2(d) of the Lanham Act precludes the registration of a mark that so resembles a registered mark “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) (1994). In an opposition founded on sеction 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. See generally 3 J. Thomas McCarthy, McCaRthy on Trademarks and Unfair Competition § 20.04 (3d ed. 1994).
The cases on analogous use have not required that the opposer proffer survey evidence or other direct evidence of the consuming public’s identification of the target word or phrase with the opposer as thе source of a given product or service. Instead, the fact finder may infer the fact of identification on the basis of indirect evidence regarding the opposer’s use of the word or phrase in advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications.
See
McCaRthy § 20.04[2], at 20-32 (collecting cases). Where, however, such indirect 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. For example, in
Old Swiss House, Inc. v. Anheuser-Busch, Inc.,
[t]he articles ... were, in effect, press releases; in all but one, the mark, The Old Swiss House, was buried in the body of the articles. This, in our view, is not the type of public exposure of a mark that would be expected to have any significant impact on the purchasing public.
Id.
T.A.B. contends that PacTel, much like the opposer in
Old Swiss House,
has failed to adduce evidence legally sufficient to support the critical inference that the consuming public identified the word TELE-TRAC with a single source as the provider of vehicle tracking and location services prior to October 27, 1989.
3
We agree. We note, first, that PacTel’s use of TELETRAC in various forms prior to June 1989 is simply irrelevant to its analogous use priority rights, inasmuch as neither the vehicle tracking service itself nor PacTel’s connection to it wаs advertised in any way prior to June 1989. The remaining evidence, while relevant, does not support the necessary inference of public identification. Of the press releases PacTel issued, only one was shown to have been circulated by a national wire service. The record contains no evidence, however, to indicate how many of PacTel’s potential consumers may have been reached by that wire service story. Although the record indicates that some of PacTel’s press kits were distributed to potential customers, no evidence was presented enabling one to infer that a substantial share of the consuming public had been reached. Likewise with PacTel’s slide show presentations to seven potential customers: we discern nothing in the record to indicate whether this group of customers constituted more than a negligible portion of the relevant market. Finally, the brochures
An unbroken line of precedents of both this court and the Board make clear that activities claimed to constitute analogous use must have substantial impact on the purchasing public. For example, in
Computer Food Stores, Inc. v. Corner Store Franchises, Inc.,
In subsequent cases our court has reviewed prior publicity of the type involved here to determine whether it was sufficiently clear, widespread and repetitive to create the required association in the minds of potential purchasers between the mark as an indicator of a particular source and the service to become available later. Sometimes the evidence was found sufficient, other times not.
Moreover, the test of sufficiency for analogous use of a mark was sometimes articulated differently from the Board phrase “open and notorious public use” from
Computer Food Stores
or our court’s original phrase “popularized in the public mind” from
Jim Dandy.
Thus, as noted above, in
National Cable Television
we spoke of “prior public identification,”
Therefore, the Board in this ease clearly misstated the law when it concluded that PacTel’s advertising, media and sales efforts were sufficient for analogous use as “intended to create an association in the mind of the relevant purchasing public between the mark, the services to be offered, and a single source.” 32 USPQ2d at 1675 (emphasis added). The user’s intent, no matter how clearly established, cannot suffice in lieu of proof of the necessary “prior public identification.”
It is true that the user is also required to еstablish intent to appropriate the mark, but we do not rely on insufficient proof of such intent. Rather, our disposition of this appeal is based on PaeTel’s insufficient proof that its publicity created “the necessary association,” the “prior public identification,” the “popularization in the public mind.”
That is not to say that a fixed percentage, like 20%, much less 51%, of the potential customers must have formed in their mind the required “prior public identification.” As we noted above, it simply requires “more than a negligible portion of the relevant market.” In other words, advertising of sufficient clarity and repetition to create the required identification must have reached a substantial portion of the public that might be expected to purchase the service. Thus, the user must prove that the “necessary association” was created among more than an insubstantial number of potential customers. Otherwise, he cannot show “significant impact on the purchasing public.”
It is true, for example, that seven vehicle fleet owners saw a slide show about PacTel’s tracking service that included display of the mark. But, as we noted, in the absence of any proof by PacTel of the size of the market, it is simply impossible for us to conclude that seven customers was more than a negligible or insubstantial number. PacTel utterly failed to prove the size of the market. Moreover, since one of the competing and inconsistent marks it used during the same period, CORPORATE FLEET LOCATOR SERVICE, suggests that every corporation that has a fleet of cars falls within the relevаnt market, one can only assume that the market may include many thousands of companies. If, for example, PacTel had shown that its service was directed only to major car rental companies, then it might have established that the relevant market consisted of only a dozen or two potential customers, of which seven would clearly have been a substantial number. However, there was no such proof.
As noted above, survey evidence has nеver been required. Nothing we decide today in any way changes that established rule. In fact, however, in many cases lacking survey evidence, advertising programs and budgets are proven to support the inference of public identification. Significantly, no such evidence was produced here. We do not have any evidence that any air time or any newspaper space was purchased. No advertisements were shown to have been placed. We dо not even have gross dollar figures on advertising expenditures. Nor do we have any indication of “readership.”
That is not to say that advertising expenditures, any more than market surveys, are indispensable proof. Nevertheless, they are common forms of proof and often constitute legally sufficient evidence of analogous use. By contrast, here we have only the most limited evidence, and most of it concerns merely
attempts
to reach the public. Thus, we know that 300 press kits were prepared and distributed to news organizations and an indefinite number of potential customers, and that each kit contained a press release. But of the 300 kits, we have been shown no evidence that any media organizations in fact published or broadcast the information the release contained, with only one exception. As noted above, one national trade wire service carried one story. We also know that 11 articles appeared in various publications in September and October 1989, but those were not advertisements per se but news articles. Just as the “12 articles, each published only once, which appeared in various newspapers and trade journals [in a three-month period]” were found insufficient in
Old Swiss House,
Whether adequate proof was in fact available but simply was not gathered and proffered by PacTel is not a subject on which we can, should or do speculate. Rather, we must take the record as PacTel made it. Accordingly, the decision of the Board, premised as it was on both an erroneous view of the law and a misassessment of the evidence, cannot stand.
Conclusion
Because the Board erred in concluding that PacTel presented sufficient evidence to ground its claim of analogous use priority under section 2(d) of the Lanham Act, we vacate the Board’s decision. Because the question whether T.A.B.’s October 1989 post card mailing constitutes a valid “use in commerce” has not yet beén adjudicated, supra note 2, we remand the case to the Board for further proceedings on that question and any others the Board may need to adjudicate.
Vacated and Remanded
Costs
Each party to bear its own costs.
Notes
. As the Board noted, PacTel raised the allegation of likelihood of confusion for purposes of the opposition alone. PacTel Teletrac v. T.A.B. Sys., 32 USPQ2d 1668, 1669 n. 4 (TTAB 1994). PacTel filed two service mark applications connected with the TELETRAC mark after T.A.B. filed the application now in suit. The examining attorney indicated that those applications may be refused in the event that T.A.B.’s application results in a registration. As a result, PacTcTs applications have been suspended pending the outcome of this proceeding. Id.
. Because the Board granted summary judgment on analogous use grounds alone, it expressly declined to address the question whether T.A.B.’s October 1989 post card mailing was a valid “use in commerce.” Id. at 1671 ("Nor need wc decide the parties' dispute as to whether applicant's post card mailing ... constituted ‘use in сommerce,' because even if it did, opposcr’s analogous use predates that mailing and suffices to establish opposer’s priority.”). Likewise, the Board expressly declined to address the question whether PacTel had used TELETRAC as a trade name before October 1989. Id. ("[W]e need not and do not address opposer’s claims based on priority of trade name use.”). As a result, neither of these questions is before us on appeal.
. Because T.A.B. prevails on this contention, we assume, without deciding, that the commercial availability of its vehicle tracking service is not a legal prerequisite to PacTcl's reliance on its analogous use of TELETRAC to establish priority over T.A.B.'s use of TELETRAK.
. The information PacTel distributed showed the use of '‘Stolen Vehicle Locator Service,” "Emergency Alert Service,” and "Corporate Fleet Locator Service” in connection with its proposed tracking service.