Wednesday, January 15, 2014

Rendering of Hair Styling Services for Free to 4 Customers Established Priority in BLAST BLOW DRY Opposition

This Section 2(d) opposition boiled down to a question of priority of use. Applicant sought to register the mark BLAST BLOW DRY BAR & Design, shown below, for hair salon services [BLOW DRY DISCLAIMED], but opposer claimed a likelihood of confusion with its allegedly previously-used mark BLAST BLOW DRY for identical services. The Board found that opposer used its mark on December 8, 2011 (a mere two days before applicant's filing date) when it provided hair styling services, free of charge, to four persons attending a jewelry store's holiday party, with opposer’s stylists wearing clothing bearing the name BLAST BLOW DRY and distributing promotional materials during the event. That usage was sufficient to establish priority, and the Board sustained the opposition. Blast Blow Dry Bar LLC v. Blown Away LLC d/b/a Blast Blow Dry Bar, Opposition No. 91204769 (January 4, 2014) [not precedential].


Although in some cases, the rendering of services to only four persons would not constitute "use," the Board took into account "the low cost and limited nature of the parties' hair styling services, and the local nature of the parties’ businesses, which currently operate in single locations." [Opposer in Austin, Texas, and applicant in Minneapolis]. The Board also noted that three weeks later, opposer was paid for services rendered to a larger number of customers at its place of business, and use of the mark continued thereafter.

Applicant also engaged in a promotional event on that same date, December 8, 2011, which event ( a tennis program's holiday party) was attended by some 20 people not affiliated with applicant. During the event applicant demonstrated its "blow out" technique on one of applicant’s co-owners, and applicant's logo was displayed on a hard poster and on various promotional items distributed to attendees. But applicant did not couple its promotional efforts at the event "with the actual rendering of the involved services to potential customers."

That distinction is sufficient, under the facts of this case, for us to find that opposer established actual trademark use on December 8, 2011, while applicant’s purely promotional efforts before a small group of people were insufficient to establish either actual service mark use or use analogous to service mark use, leaving applicant to rely on the subsequent December 10, 2011 filing date of its involved application.

Both parties attempted to rely on use analogous to service mark use in order to establish priority. However, the Board observed, the parties’ "mere registration of their marks as domain names is not enough to establish service mark use or use analogous to service mark use where neither party operated an active website accessible through its domain name." Nor was the mere formation of a limited liability company.

Opposer distributed business cards and promotional materials, but there was no evidence regarding how many customers or potential customers were reached via these efforts. Applicant’s promotional efforts at the tennis program’s small holiday party on December 8th did not reach a sufficient number of people to constitute use analogous to service mark use.

Considered as a whole, the parties’ evidence falls short for the same reason. That is, even where the parties made open use of their names or marks, such as through a banner "on" opposer’s store or through promotional appearances at events, there is simply no evidence that these efforts reached a sufficient number of people, and we therefore cannot determine whether the parties’ efforts had an impact, much less a "substantial impact," on the purchasing public.

Therefore the Board found that neither party had established use analogous to service mark use. Since Opposer did establish actual use of its mark on December 8, 2011, it won the priority contest, and the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Note that "use" of a service mark requires the actual rendering of the services. Advertising and promotion may prove analogous use, provided that it is sufficiently widespread. What if you open a restaurant on day one, with signage out front, but no customer arrives until day two. Is the mark in use on day one? Is there use analogous to service mark use on day one?

Text Copyright John L. Welch 2014.

9 Comments:

At 7:56 AM, Anonymous Miriam Richter, Ft. Lauderdale said...

I think the restaurant analogy hits the nail on the head - we need to make the distinction between hypothetically offering the service and actually offering the service. I believe we should equate rendering the service (for use in commerce purposes) with actually offering it. As such, the restaurant's mark is "in use" when they unlock the door for the public to enter (even if no one does) but the hair styling service is not "in use" at the promotional event because they didn’t offer the service at that time. That seemed to be the distinction between the two companies - one was able to offer the service on the spot and the other wasn't.

I don’t see why it should be any different for services than it is for products. I think we all agree that a trademark is in use when the product is “on the shelf” even if no one buys it. I seem to remember a case a few years ago regarding a trademark for yachts that the TTAB said was in use even though there were no sales. A single yacht had been built and so it could have been purchased and that was sufficient for the Board.

 
At 8:20 AM, Blogger John L. Welch said...

The definition of "use" in Section 45 of the Trademark Act, for a service mark, requires that the services be "rendered" in commerce. Does offering = rendering?

 
At 9:15 AM, Anonymous Miriam Richter said...

I think it has to. I can think of a dozen bizarre scenarios that could result if it didn’t! Not to mention the dichotomy that would result between service marks and trademarks. I think we should look back to the TRLA when the creation of intent to use applications eliminated nominal use and we began thinking in terms of the normal course of business. After all, trademarks are “speaking” to potential customers and providing them with information prior to a purchase regardless of whether it is a service or product. If they can make the purchase on the spot then the trademark is doing its job.

NB: An alternate definition of render is “to present for consideration, approval, payment, action” - that fits this scenario perfectly.

 
At 11:29 AM, Anonymous Anonymous said...

"Commerce" means all commerce which may lawfully be regulated by Congress. I am baffled that offering up a couple of haircuts to (presumably) instrastate customers while the stylists wear clothing that has the mark on it would qualify as "commerce" under the statute. There is nothing in the opinion that indicates that either party is engaging in "commerce." These are both small intrastate businesses with no interstate customers or advertising. In my humble opinion and based upon the factual findings in that opinion, the USPTO does not have the authority to grant federal protection to either party.

The discussion in the opinion is concerned with the location of the banner and whether or not the haircuts were free. How about the fact that we seem to have a complete lack of commerce?

 
At 12:13 PM, Anonymous Orrin A.Falby said...

See Aycock Engineering v. AirFlite(CAFC 2008) ("The language of the statute, by requiring that the mark be “used or displayed in the sale or advertising of services, and the services are rendered in commerce,” makes plain that advertisement and actual use of the mark in commerce are required; mere preparations to use that mark sometime in the future will not do.") This conclusion is support by the following TTAB decisions: In re Cedar Point, Inc., 220 USPQ 533, 536 (TTAB 1983) (quoting Intermed Commc’ns, Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977)); Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982). The advertising or publicizing must relate to “an existing service which has already been offered to the public.” Greyhound, 214 USPQ at 474. Furthermore, “[m]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark.” Intermed, 197 USPQ at 507; see Blue Bell, 497 F.2d at 437. “At the very least,” in order for an applicant to meet the use requirement, “there must be an open and notorious public offering of the services to those for whom the services are intended.” Intermed, 197 USPQ at 507."

 
At 12:16 PM, Blogger John L. Welch said...

Priority may be based on intrastate use. Opposer may not have had interstate use that would support a federal registration, but that is a different issue.

The question here is whether applicant is entitled to a registration. The opposed application was based on intent-to-use, so opposer could not have raised the issue of lack of interstate use by applicant.

 
At 12:30 PM, Anonymous Anne Gilson LaLonde said...

What about launching a website selling widgets instead of the restaurant example? Is that nationwide "use," then, if the site offers shipping throughout the United States??

 
At 12:50 PM, Anonymous Anonymous said...

Thank you for that lesson John. I now also see where McCarthy discusses this at Section 20:17. "In order to establish priority of use in a mark, opposer need not prove priority of use in interstate commerce. Proof of prior and continuous use in intrastate commerce is sufficient to preclude registration." Authority stems from Section 2(d) of the Lanham Act.

Thanks.

 
At 10:16 AM, Blogger Mashail S.G. said...

According to § 43 from Lanham act, I think the opposers have sufficiently proven that they displayed their mark in the sale which provided hair styling services on December 8, 2011. Although the service on that day is free, it is pretty common that the service providers use this kind of promotional method to attract more customers at its very beginning of the business. In fact, speaking of the engagement of the commerce, the opposers’s free service is much more likely to perform commercial service than those promotional items of the applicants. This case complies with the rule of "first come, first serve". Even if I am merely one minute earlier than you, I get it not you. It’s harsh, but it's fair, too. If you argue that one day earlier is not sufficient to establish the priority, then can you define how much time earlier is sufficient? If the timeline can be modified case by case, and anyone who is trying to register its trademark can successfully manipulate the definition of "first come, first serve", then the whole trademark law system will fall apart. In trademark law a person could establish IP protection through using it, that what really make USA one of the TM’s unique systems. In my perspective, the opposer party used the mark but the period of the usage is sufficient or not establishes a priority defense, is the court job to determine it according to the facts. I think the applicant is ineligible to register the mark because it is unavailable. The “BLAST BLOW DRY” owners did not register the mark, but they use it; consequently, it is qualified for IP protection because they use the mark in commerce. Undoubtedly, I think that defines the meaning of “use in commerce”. They used the mark just a day or two former to the registration day, which does permit them to have the priority. In the end, I think the court wanted to prevent the likelihood of confusion on consumers’ perception; I believe the court found that they have the priority, and they fulfilled the usage requirement by the bona fide usage of “BLAST BLOW DRY” mark in the ordinary course of trade.

 

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