TTAB Cancels "CITYSTAY HOTELS" Registration as Void Ab Initio: Hotel Lodging Services Not Rendered as of Filing Date
In this streamlined cancellation proceeding, the parties filed a joint request to resolve the matter via Accelerated Case Resolution (ACR), accompanied by a joint stipulation of facts. Respondent CSH fatally stipulated that it had not rendered "hotel lodging" services at the time of filing its application that yielded the challenged registration for CITYSTAY HOTELS. And so the Board sustained the petition for cancellation on the ground that Respondent's mark was not in use as of the filing date, and its registration is therefore void ab initio. Jonathan M. Kelly v. Citystay Hotels, LLC, Cancellation No. 92048998 (April 28, 2010) [not precedential].
Petitioner Kelly neglected to provide any evidence of its standing, but the Board nonetheless found standing established by statements made in Respondent's brief: it admitted that Kelly's application for the service mark CITISTAY had been suspended in light of the challenged registration.
Respondent CSH stipulated that as of its filing date it had not operated any "brick and mortar" establishments "commonly known as a 'hotel' providing lodging or other temporary residency for travelers and the public," nor had any entity related to CSH provided those services, nor had it licensed the mark to another. It had only hired website and marketing consultants, made presentations at hospitality trade shows, and negotiated with a hotel company regarding possible collaboration.
CSH feebly argued that brick and mortar establishments are not necessary and that "the exchange of money or some other trade in association with the mark is enough to satisfy commerce." It relied on definitions of "commerce" and "trade" from something called the "Lectric Law Library."
The Board turned to dictionary definitions of "hotel" and "lodging" to find that "hotel lodging means a commercial establishment offering persons a temporary place to stay" -- i.e., brick and mortar. Moreover the Lanham Act provides the pertinent meanings of "commerce" and "trade," not the "Lectric Law Library."
According to Section 45, 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." Mere publicity about the services to be rendered in the future does not suffice; there must also be a rendition of the services in commerce.
Here, the mark CITYSTAY HOTELS was not in use as of Respondent's filing date. "It is not enough that respondent contracted with third parties to create a website and build technology and booking servers, or even that applicant advertised and promoted hotel lodging services."
Consequently, "the application and resulting involved registration are void ab initio."
TTABlog comment: A similar result was recently reached in Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential]. [TTABlogged here].
Text Copyright John L. Welch 2010.