CAFC Affirms TTAB: a Service Mark is Not in "Use" Until the Services are Rendered

The CAFC affirmed a decision of the TTAB (here) that ordered cancellation of a registration for the mark PLAYDOM for certain entertainment services. The appellate court agreed with the Board that the registration was void ab initio because Registrant David Couture had not used the mark in the rendering of the services prior to filing his underlying Section 1(a) application. Couture v. Playdom, Inc., Appeal No. 2014-1480 (Fed. Cir. March 2, 2015) [precedential].

In seeking registration based on use in commerce under Section 1(a) of the Lanham Act, an applicant must have used the mark in commerce with the listed goods or services as of the filing date of the application. Section 45 provides that a service mark is in use in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

The Board found that the appellant had not rendered the identified services as of the application filing date. He had "merely posted a website advertising his readiness, willingness, and ability to render said services." The Board therefore deemed the registration void ab initio and it granted to petition for cancellation.

The CAFC observed that it had not previously addressed directly the question of "whether the offering of as service, without the actual provision of a service, is sufficient to constitute use in commerce under the Lanham Act." It the Statute is to bear clear on its face as to the definition of "use" for a service mark: the mark must be both displayed in the sale or advertising of services and the services must be rendered.

And so the CAFC affirmed the TTAB's ruling ordering cancellation of Mr. Couture's registration.

Read comments and post your comment here

TTABlog note: Maybe the reason the CAFC never had the opportunity to address this issue before is because the wording of the definition of "use" in Section 45 is clear on its face.

Text Copyright John L. Welch 2015.

Reminder: TTABlog Road Trip: IPO's "PTO Day" in Wash., D.C., March 10th

Yours truly, the TTABlogger, will be speaking at "PTO Day," sponsored by the Intellectual Property Owners Association (IPO), on March 10, 2015, in Washington, D.C. The event will feature many luminaries from the USPTO, including Deputy Director Michelle Lee, Commissioner for Trademarks Mary Denison, Commissioner for Trademarks, TTAB Chief Administrative Trademark Judge Gerard F. Rogers, and Sharon Marsh, Deputy Director for Examination Policy. It will be held at the JW Marriott Hotel, 1331 Pennsylvania Avenue, NW. The program may be found here and registration here. Tentative title for my talk: "The Top 9 or 10 TTAB Decisions of the Past Year or So." See you there?

In an intriguing afternoon session, friends and fellow bloggers Ron Coleman and Steve Baird, along with Jesse Witten and the USPTO's Cynthia Lynch, will focus on "an overview of Section 2(a) of the Lanham Act as well as the procedures for determining if a trademark is disparaging. Then, attendees will hear from counsel that represented the Native Americans in the Washington Redskins case (Baird and Witten) as well as the counsel for The Slants (Coleman)."

Read comments and post your comment here

Text Copyright John L. Welch 2015.

TTAB Posts March 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (VIII) oral hearings for the month of March, as listed below. Seven of the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing in the OMEGA case will be held as part of that ABA-IPL Conference in Bethesda, Maryland (details here). The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



March 12, 2015 - 11 AM: In re Erik M. Pelton & Associates, PLLC, Serial No. 85817818 [Section 2(e)(1) mere descriptiveness refusal of TUESDAY TRADEMARK TIP for providing online newsletters in the field of brands, trademarks, and trademark law via e-mail"].

March 17, 2015- 11 AM: Johnathan L. Fox v. JMIR Publications Inc., Cancellation No. 92056565 [Petition for cancellation of a registration for the mark HEALTHBOOK for "Providing an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports; all of the above excluding services related to social networking" on the ground that mark was not in use for the services at the time of filing of the underlying application, and also on the ground of abandonment].

March 19, 2015 - 11 AM: In re Tango Card, Inc., Serial Nos. 85878822 and 85878838 [Section 2(e)(1) mere descriptiveness refusal of REWARDS AS A SERVICE for promotional and marketing services and for providing an online non-downloadable system application, featuring the provision of rewards programs].

March 24, 2015 - 11 AM: Mango's Tropical Cafe, Inc. v. Tango Mango, Inc. , Cancellation No. 92055269 [Petition for cancellation of a registration for TANGO MANGO for restaurant services, in view of opposer's alleged family of MANGO-formative marks, including MANGO'S TROPICAL CAFE and MANGO'S MAMBO BAR, for restaurant services].

March 24, 2015 - 2 PM: L'Oreal USA, Inc. and L'Oreal v. Mikhail Levitin T/A Mikhail Levitin Institute, Opposition No. 91202898 [Opposition to registration of the mark shown below for "anti-aging cream" on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered mark L'OREAL and related marks, for beauty care products, including face cream and face lotion].

March 25, 2015 - 11 AM: Premio Foods, Inc. v. EDS Manufacturing, LLC. , Opposition No. 91206407 [Opposition to registration of PREMO for "fruit salads and vegetable salads" and for "packaged foods, namely, deli sandwiches and desserts," in view of the registered mark PREMIO for sausages].

March 26, 2015 - 10:15 AM: Omega S.A. v. Alliant Techsystems Inc., Oppositions Nos. 91173785 and 91174067 [Oppositions to registration of the two marks shown below, for tactical gear and tactical equipment for military, law enforcement and defense applications, on the grounds of fraud and likelihood of confusion with opposer's OMEGA marks for watches and other goods].

March 26, 2015 - 2 PM: in re Josef Dolezal , Serial No. 85826122 [Section 2(c) refusal to register JORDAN MAXWELL for "Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring talks, lectures and presentations by Russell Joseph Pine a.k.a. Jordan Maxwell," on the ground that the mark identifies a living individual whose consent is not of record].

Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2015.

The Trademark Reporter's "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Seventh Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here).

Ted Davis declares that trademark practitioners may be living through "the most dynamic period of case law since the founding of the republic." In the past 18 months or so, the Supreme Court has accepted four cases for review and decided three of them. [Can you name them? - ed..] Lower federal courts also produced a burst of decisions in the trademark field, notably involving the rights of plaintiffs, especially athletes, to control authorized uses of their personas, and the availability of a presumption of irreparable harm in false advertising cases. But I will not attempt to summarize Ted's exhaustive review in this briefest of blog posts.

Back at the TTAB, with its narrow focus on registrability, things were less dramatic. In one case of great interest to your truly, the Board upheld a rare claim under Section 14(3) of the Lanham Act, ordering cancellation of a registration on the ground that the owner used the mark to misrepresent the source of the goods (only to have the decision overturned last month by the Eastern Virginia district court). In another case of first impression that involved yours truly, the Board ruled that Section 18 of the Lanham Act permits a petition for rectification of a color mark registration to limit the scope of the mark to the actual color in use. [To paraphrase the late Lesley Gore, it's my blog and I'll crow if I want to!]. Another case worth watching is the pending appeal from the Board's In re Tam decision concerning THE SLANTS, in which (along with the pending action for review of the REDSKINS case, the First Amendment may ultimately play a critical role.

TTABlog note:  Did Justice Sotomayor's elevation to the Supreme Court have any influence on this recent willingness of the Court to take trademark cases, since she practiced at least in part in the trademark field? I'll ask her next time I see her.

Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2015 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 105 TMR 1 (January-February 2015).

Text Copyright John L. Welch 2015.

TTAB Dubiously Requires Disclaimer of RAIL for Surgical Implants

Relying on two third-party patent applications, the Board affirmed a refusal of the mark shown below, based upon applicant's failure to disclaim the word "RAIL," for "surgical implants made of artificial materials used in spinal surgery, namely, structural members used to connect pedicle screws in a spinal construct" [TECHNOLOGY disclaimed]. In re K2M, Inc., Serial No. 85679575 (February 17, 2015) [not precedential].

Although recognizing that "rail" has multiple meanings, the Board pointed to two patent applications that use the that word in connection with spinal implants. [Two patent applications? Maybe they will be rejected for indefiniteness. How many people read pending patent applications anyway? Why should this applicant be stuck with the usage of the word "rail" made by two third-party patent applicants? Is this the best evidence the USPTO could come up with? - ed.]. According to the Board, these two patent applications established that the term “rail” is "used generically by third parties to describe a structural component of spinal implants and the term will be understood in that same manner when used in connection with Applicant’s spinal implants."

Applicant submitted a declaration of its vice-president, saying that he never heard of the term "rail" used "to describe a member that interconnects screws implanted into the spine." The word commonly used in competitor literature is "rod." The Board pooh-poohed that evidence, observing that even if applicant is the first and only user of the term "rail," the word may still be merely descriptive of the goods.

Finally, the Board rejected applicant's contention that the mark is unitary and a disclaimer is not required.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: In this blogger's opinion, the Board gives entirely too much probative weight to statements made by third parties in patent applications and patents. But then, being a patent attorney, maybe I'm biased.

My point is that just because some patent attorney, perhaps newly-minted and still wet behind the ears  and probably not an expert in the technology, while fumbling for a word to name an element in the patent drawings, chooses the word "rail," does not mean that "rail" would be understood by the relevant consuming public to mean what the Board thinks it means.

Text Copyright John L. Welch 2015.

Recommended Reading: Benschar and Springut, Does Reckless Indifference Suffice for Fraud?

Tal S. Benschar & Milton Springut ask "Does Reckless Indifference Suffice for a Cancellation Proceeding Predicated on Fraud?," 14 J. Marshall Rev. Intell. Prop. L. 20 (2014). They answer in the affirmative.


The CAFC's decision in In re Bose Corp. left open the question of whether reckless disregard for the truth is sufficient to make out a case for fraud on the USPTO. [See FRAUD-O-METER above].

This article answers that question in the affirmative. We show that at common law, reckless disregard for the truth has long been recognized as sufficient to make out a case of fraud, and that has been carried over to several federal statutory contexts. Under the long-established rule that common law terms must be interpreted consistent with the common law absent some compelling statutory language to the contrary, the Lanham Act’s cancellation-for-fraud provision must be interpreted as extending to recklessness.

The article also examines whether the question "might depend on the form in which particular representations are verified to the Trademark Office." And it suggest some changes that the Office might consider making to its verification forms to clarify this issue.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

TTAB Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

At least one of the three Section 2(d) refusals summarized below was reversed, and a least one was affirmed. Can you figure out what happened in each case?  [Answer in first comment]. 


In re James Harris, Serial No. 85918970 (February 23, 2015) [not precedential]. [Section 2(d) refusal THE WASH BOX for "portable vehicle wash water filter" [WASH disclaimed], finding it confusingly similar to the registered mark WASH IN A BOX for "vehicle washing and cleaning equipment, namely, automated pressure washing and pressure rinsing machines and electronic and mechanical controls therefor, all sold as a unit; vehicle washing machines and parts therefor."]

In re World of Wine Events, LLC, Serial No. 86013688 (February 19, 2015) [not precedential]. [Section 2(d) refusal of SAN DIEGO BAY WINE & FOOD FESTIVAL for "arranging, organizing, conducting, and hosting social entertainment events; conducting entertainment exhibitions in the nature of food and wine festivals; consultation in the field of special event planning for social entertainment purposes; entertainment services, namely, wine and food tastings" in view of the registered mark SAN DIEGO BAY for promoting tourism and economic development in the San Diego Bay area.]

In re Sunton Enterprises, Inc., Serial No. 85863532 (February 19, 2015) [not precedential]. [Refusal to register AYLAZZARO for "handbags, luggage and trunks," in view of the registered mark LAZARO for "handbags, briefcases, briefcase-type portfolios and wallets."]

Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2015.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of INTERNATIONAL AIR AND SPACE PROGRAM for Aero Space Conferences

In a four-page decision, the Board affirmed a Section 2(e)(1) refusal to register the mark INTERNATIONAL AIR AND SPACE PROGRAM for "organizing conferences and symposia in the field of aero space" [AIR AND SPACE PROGRAM disclaimed]. Would it be fair to say that any affirmance of a Section 2(e)(1) that runs five pages or less is presumptively a WYHA? Would You Have Appealed? In re Aexa Aerospace LLC, Serial No. 86181509 (February 19, 2015) [not precedential].

In light of the disclaimer, applicant focused its argument on the word "international," claiming that the word could have a variety of different meanings to consumers and therefore that some degree of imagination would be required to associate the term with applicant's services. That argument never took off because, as the Board pointed out, the mark must be considered not in the abstract but in the context of the services. Applicant's specimen of use described its services as "an international program for students," and so the Board agreed with Examining Attorney Matt Einstein that consumers will immediately recognize that the word "international" conveys information about applicant's services.

Moreover, the Board has in the past found marks incorporating the word "international" to be merely descriptive of services that are international in scope: for example, INTERNATIONAL BANKING INSTITUTE for organizing seminars for bankers from major countries, BILLFISH INTERNATIONAL COMPANY for services involving billfish on an international scale, and INTERNATIONAL TRAVELERS CHEQUE for financial services of international scope.

Finally, the Board noted that the combination of INTERNATIONAL with AIR AND SPACE PROGRAM created no new meaning beyond that of the constituent terms.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: With cases like this, I could be a TTAB judge.

Text Copyright John L. Welch 2015.

TTAB Test: Is "ARMADALE" for Vodka Confusable with "ARMADA" for Sherry?

AV investment Group LLC applied to register the mark ARMADALE for vodka, but Sandeman Sons opposed, claiming a likelihood of confusion with its registered mark ARMADA (in slightly stylized form) for sherry wine. Opposer argued that the applied-for mark merely adds "LE" to its arbitrary mark, and that vodka and sherry are related because they are consumed together and are offered by some third parties under the same mark. How do you think this came out? Geo G. Sandeman Sons & Co., Limited v. A V Investment Group LLC., Opposition No. 9120208 (February 20, 2015) [not precedential].

The marks: The Board agreed that ARMADA is an arbitrary term for an alcoholic product, and a term that consumers would recognize, but applicant's mark ARMADALE is not a recognized word. The addition of "LE" makes the latter mark look like a combination of "ARMA" and "DALE," creating the impression of a geographic reference as opposed to a fleet of warships. Moreover, applicant's mark would likely be pronounced as two words, ARMA and DALE, rather than as ARMADA and LE.

Although there is some similarity in appearance between the marks, the differences in connotation and pronunciation require that the first du Pont factor be weighed strongly in favor of a finding that there is no likelihood of confusion.

The goods: Opposer submitted a number of cocktail recipes that include both sherry and vodka, as well as Internet evidence that wine and vodka may be offered under the same mark. The parties agreed that the channels of trade for the goods may overlap, and that some of the purchasers of the goods may exercise only ordinary care. The Board found that these factors slightly favored opposer.

Applicant pointed out that its prior, now-cancelled registration for ARMADALE co-existed with the cited registration on the Trademark Register. The Board, however, pointed out that this fact is entitled to little weight.

“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” In any event, the ’636 Registration is cancelled. Cancellation “destroys the Section [7(b)] presumptions” to which an existing registration is entitled, In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979), so it cannot even be presumed that the prior registration was valid when registered.

Relying primarily on the differences in the marks, the Board concluded that confusion is not likely and it dismissed the opposition.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.

Florida Bar 6th Annual IP Symposium: Fort Lauderdale, March 5-6th

The Florida Bar Continuing Legal Education Committee and the Business Law Section will hold the 6th Annual Intellectual Property Law Symposium in Fort Lauderdale, Florida, on March 5 and 6, 2015. The March 5th session begins in the afternoon with a meeting of the Intellectual Property Committee, followed by a reception, and then dinner featuring keynote speaker Ron Fierstein, author of "A Triumph of Genius: Edwin Land, Polaroid and the Kodak Patent War." The Friday program includes a presentation by Mary Boney Denison, USPTO Commissioner for Trademarks. Details and registration here.

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TTABlog Road Trip: IPO's "PTO Day" in Washington, D.C., March 10th

Yours truly, the TTABlogger, will be speaking at "PTO Day," sponsored by the Intellectual Property Owners Association (IPO), on March 10, 2015, in Washington, D.C. The event will feature many luminaries from the USPTO, including Deputy Director Michelle Lee, Commissioner for Trademarks Mary Denison, Commissioner for Trademarks, TTAB Chief Administrative Trademark Judge Gerard F. Rogers, and Sharon Marsh, Deputy Director for Examination Policy. It will be held at the JW Marriott Hotel, 1331 Pennsylvania Avenue, NW. The program may be found here and registration here. Tentative title for my talk: "The Top 9 or 10 TTAB Decisions of the Past Year or So." See you there?

In an intriguing afternoon session, friends and fellow bloggers Ron Coleman and Steve Baird, along with Jesse Witten and the USPTO's Cynthia Lynch, will focus on "an overview of Section 2(a) of the Lanham Act as well as the procedures for determining if a trademark is disparaging. Then, attendees will hear from counsel that represented the Native Americans in the Washington Redskins case (Baird and Witten) as well as the counsel for The Slants (Coleman)."

Read comments and post your comment here

Text Copyright John L. Welch 2015.