Monday, April 06, 2009

CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration

In a precedential decision, the CAFC answered the following question: "whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service's development but never offers the services to the public." The panel majority held that "it is not," and it therefore affirmed the TTAB's 2007 ruling (here) that Aycock Engineering, Inc.'s registration for the word mark AIRFLITE for "arranging for individual reservations for flights on airplanes" was void ab initio. Judge Newman dissented. Aycock Engineering, Inc. v. Airflite, Inc., 90 USPQ2d 1301 (Fed. Cir. 2009) [precedential]. [.mp3 of CAFC oral argument here).

Airflite, Inc.'s mark

William Aycock intended to operate a service by which individual passengers could arrange flights on chartered aircraft. He formed a company and in 1970 invited air taxi operators to join his operation, eventually entering into contracts with several. He filed a service mark application in 1970 for the term AIRFLITE, which he used in his advertisements to the taxi operators.

However, Aycock never marketed the AIRFLITE services to the general public. Although he obtained two toll-free numbers for use by the public, there was no evidence that these numbers were ever operational or that Aycock ever spoke to a member of the general public about making a reservation. Nor did he ever arrange for a passenger to fly on a chartered flight.

Aycock arrived at the recitation of services in his registration after "considerable negotiation" with the PTO. The TTAB cancelled the registration, agreeing with Airflite, Inc. that Aycock "failed to render the service described in its registration in commerce." [The TTAB declined to reach any other issue, including abandonment and fraud].

The key to the CAFC's ruling was the definition of the recited services. The TTAB concluded that the scope of this description was "limited to regulating, coordinating, operating, or administering a system to book flights on airplanes," which required more than arranging the network of air taxi operators. Aycock argued that the TTAB's interpretation of the recited services was erroneous, and that the record, including the prosecution history, supported a construction "that permits the mere arranging of a network of air taxi operators by itself to constitute the service."

The CAFC agreed with the Board that "the service described in Mr. Aycock’s registration is arranging for the transportation of a person from one place to another or providing a communication service between a person desiring custom air travel and an air taxi operator, and that this entails more than the arranging of the network of air taxi operators." The recited services require "the arranging of flights between an air taxi operator and a passenger."

The question then was whether Aycock had used the mark in commerce for the recited services. "[L]ike the current use requirement, a service mark applicant seeking to meet the pre-1989 version had to (1) use the mark in the sale or advertising of a service and (2) show that the service was either rendered in interstate commerce or rendered in more than one state or in this and a foreign country by a person engaged in commerce."

Relying on several TTAB precedents, the CAFC observed that the statutory language "makes plain that advertisement and actual use of the mark in commerce are required; mere preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark."

The court then framed the question thusly: "we must determine if Mr. Aycock made an open and notorious rendering, or offering, of his service to the public." It concluded that he "failed to offer his service to the public ... because he never gave anyone an opportunity to use his AIRFLITE service to make a charter flight reservation."

That Mr. Aycock advertised to, contracted with, and was paid by air taxi operators does not transform the service from its preparatory stages to being rendered in commerce. Instead, these actions were Mr. Aycock's attempts to build the service’s infrastructure, which, when completed, could then be offered to the public (and thus "rendered in commerce").

And so, the panel majority held that "Mr. Aycock's AIRFLITE service mark application did not meet the use requirement when he filed it in 1970 and is thus void ab initio."

In dissent, Judge Newman found it "inappropriate for the PTO to criticize its own description of the services and on this ground to invalidate the registration as void when granted." She asserted that the TTAB "erred in reaching out to void this registration on the questionable grounds that it adopted."

The Board errs in now interpreting the description as excluding the very services that were the basis of the registration. The services for which the mark was registered were described during the examination, shown in the specimens submitted with the application, and reasonably reflected in the description that the examiner required. If indeed a flaw in the registration is now discovered, after thirty-five years, it should be clarified and corrected, not voided ab initio. The cancellation of this long-standing registration is seriously flawed, and is seriously unjust.

Judge Newman asserted that the issue of whether the recruitment of air taxi operators constitutes a "registrable service" was improperly considered by the TTAB because it was not raised in the cancellation proceeding and was not briefed by either party. Yet, according to Judge Newman, this ruling underlies the Board's decision to void the registration.

Judge Newman found that "the service of recruiting air taxi operators and contracting with them is indeed a registrable service" and therefore "Aycock was not engaging in advance publicity, but was performing the registered service." Noting that Aycock acquiesced in the final recitation of services after many exchanges with the PTO, she concluded that:

Based on its origin in the common law of trademarks, the Lanham Act has traditionally been applied to support the commercial activity that is implemented through the marks of trade, with liberal opportunity to correct errors. It is a negation of these principles now to hold that the AIRFLITE registration of thirty-five years was void from the start, because the applicant acquiesced in a prosecution description that is now susceptible to misconstruction. It is incorrect to construe the description in a manner that invalidates it by ignoring the actual services that were performed.

TTABlog comment: Is the recitation of services in a registration meant to convey some real meaning to third parties, so that they can avoid conflict with the registered mark? Or is it a "nose of wax" that can later be twisted into a form that benefits the registration owner to the detriment of third parties? To allow Aycock to now amend the recitation of services in its registration would, I think, be like allowing a patent owner to belatedly amend its claim language in order to cover a supposedly infringing product (which is the context from which I borrow the "nose of wax" terminology). Just as the public is entitled to rely on the patent claims as written, it should also be allowed to rely on the plain meaning of a recitation of services in a service mark registration.

Text Copyright John L. Welch 2009.


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