Wednesday, June 10, 2015

TTAB Orders Cancellation of "METRO-POD" Registration for Hotel Services Due to Abandonment

The Board ordered cancellation of a registration for the mark METRO-POD for "providing hotel and restaurant services" on the ground that registrant had abandoned the mark. Respondent contended that his provision of a website for booking hotel and restaurant reservations qualified as use of the mark for the recited services. The Board disagreed. BD Hotels, LLC v. Michael D. Linczyc, Cancellation No. 92055278 (May 29, 2015) [not precedential].

Petitioner made some missteps along the way to victory. It submitted its reply brief six days late, and so the Board granted Respondent's motion to strike the brief. The Board also struck two testimonial affidavits submitted by Petitioner because affidavits are not allowed in lieu of depositions on oral examination unless the parties so stipulate in writing. Here there was no such stipulation and therefore, even though Respondent did not object, the Board refused to consider the affidavits. However, the Board did consider the exhibits attached to the affidavits, which exhibits comprised Internet printouts acceptable under Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010).

Section 45 of the Lanham Act,  provides that a prima facie case of abandonment is established by proof of nonuse for three consecutive years. To overcome that prima facie case, the mark owner must provide evidence either that it did not "discontinue" use of the mark, or that if such use has been discontinued, the nonuse of the mark was without "an intent not to resume" use.

Respondent maintained that he did provide hotel and restaurant services even though he did not own or operate a "brick and mortar" hotel or restaurant, because he runs the website which provides information and booking services for a third-party hotels, as well as links to the booking sites for several other travel-related websites. Those services, Respondent argued, fall within the broad category of "providing hotel and restaurant services." In short, according to Respondent, "providing hotel services" is a broad category that does not require actual provision of accommodation services.

The Board was not persuaded. It took judicial notice of the Random House dictionary of "hotel" as "a commercial establishment offering lodging ...," and it concluded that "providing hotel services" means "providing a commercial establishment that offers lodging." Similarly, "restaurant" means "an establishment where meals are served to customers."

There was no dispute that Respondent had not used the METRO-POD mark for a retail establishment for at least three consecutive years. Respondent contended that because "providing hotel and restaurant services" is an acceptable identification of services, the more specific services of "providing and relaying information in connection with reservations and booking for temporary lodging … fall within the large umbra" of the services recited in his registration. Respondent pointed to several registrations that include recitations such as "hotel and lodging services, namely, providing and relaying information and securing payment in connection with reservations and bookings ...." The Board, however, noted that these registrations "are simply examples of other sufficiently accurate and definite identifications of services, and do not support a finding that 'providing hotels and restaurant services,' automatically or necessarily encompasses the services that Respondent actually provides."

The question is not whether "providing hotel and restaurant services" is an acceptable identification of services – it is. The question is whether the record supports a finding that Respondent provides hotel and restaurant services under the commonly understood definitions of those terms. The record does not support such a finding.

And so the Board granted the petition for cancellation.

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TTABlog note: This appears to be a good example of what problems can arise when an individual files a trademark application without advise of counsel.

Text Copyright John L. Welch 2015.


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