TTAB Finds Service Mark Application Void ab initio for Non-Use Because Services Were Not Rendered Prior to Filing
When an applicant files a use-based application but has not used the mark for any of the identified goods or services, the application is void ab initio. There's no need for the adversary to jump through the fraud hoops: intent doesn't matter. Here, the question was whether PLMIC had used its service mark prior to filing its application. The Board said no: PLMIC may have been "ready, willing, and able" to render the services, but it didn't do so before the filing date. Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential].
In this consolidated proceeding,Parametric attempted to raise a fraud claim but failed to plead it with the requisite particularity. However, the Board did find that Parametric presented a claim of non-use: that PLMIC's application is void because the mark was not "put into use" in commerce until after PLMIC filed its application.
Parametric also asserted likelihood of confusion under Section 2(d), claiming to be the prior user of the mark FLEXPLM for computer software and related services in the field of product design. PLMIC sought to register the identical mark for overlapping services, and opposed Parametric's application, claiming priority of use. There was no dispute as to likelihood of confusion.
Application void ab initio: PLMIC filed its application on March 13, 2006. It admitted that its first consummated sale of FLEXPLM services did not occur until September 2006, but it asserted that certain activities in March 2005 constituted "use in commerce:" it posted the mark FLEXPLM on the Internet "as an advertisement of 'already-available' services and [attempted] to sell, within March 2005, those services to AimNet."
However, the Board found that these activities, including the attempt to sell the services to a single potential purchaser "simply do not constitute 'use in commerce' as defined under the Act."
While such activities may constitute the advertising and promotion of PLMIC’s services, they do not encompass the rendering of those services. In that regard, the record reflects that PLMIC’s first technical service mark use in commerce in connection with its cooperative advertising and marketing services was when they were rendered to Management Roundtable in September 2006, almost one and one-half year after PLMIC’s activities of March 2005 and almost six months after the filing date of the PLMIC’s involved use-based application.
The Board therefore concluded that, because PLMIC was not rendering its services at the time it filed its use-based application, the application is void ab initio.
Likelihood of Confusion: For the sake of completeness, the Board also considered Parametric's Section 2(d) claim. For that purpose, it assumed that PLMIC's application is valid and that it had made use of its mark as of the filing date. Parametric proved first use its mark on May 26, 2005, prior to PLMIC's filing date (which is the earliest date on which PLMIC is entitled to rely).
The Board then looked at whether, for purposes of priority on PLMIC's opposition, PLMIC's activities in March 2005 (while not technical trademark use) constituted use analogous to trademark use. The Board concluded that PLMIC's evidence fell "far short of establishing that potential purchasers make an association in their minds between the FLEXPM mark as a source indication and PLMIC's cooperative advertising and marketing services."
In sum, because PLMIC did not establish that it had made trademark use or use analogous to trademark use prior to either May 26, 2005, when PTC commenced use of its mark, or the July 13, 2006 filing date, we find that PLMIC failed to establish the requisite priority. Accordingly, it cannot succeed on its Section 2(d) claim.
And so the Board sustained Parametric's opposition and dismissed that of PLMIC.
TTABlog comment: I found the Board's discussion of priority in the two oppositions rather murky. Why was PLMIC's claimed "use analogous to trademark use" irrelevant with respect to Parametric's opposition?
Text Copyright John L. Welch 2010.