Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse

Alyssa Carson and Abigail Harrison both desire to be the first human being to set foot on Mars, which led to their clash over the term "Mars Generation." Ms. Harrison won, at least at the TTAB. The Board sustained her company's opposition to registration of the marks I AM THE MARS GENERATION and WE ARE THE MARS GENERATION for "licensing of advertising slogans and cartoon characters," finding that Applicant Carson (Alyssa's Father) "did not offer the recited service under the marks in commerce as of the respective filing dates of the use-based applications." The Mars Generation, Inc. v. Albert G. Carson IV, 2021 USPQ2d 1057 (TTAB 2021) [precedential] (Opinion by Judge Chythia C. Lynch).

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Section 45 of the Trademark Act provides, in pertinent part, that a mark is considered to be in use in commerce for services "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce." When a mark has not been used in commerce by the day the use-based application is filed, the application is void ab initio. Couture v. Playdom, 778 F.3d 1379, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015).

Applicant Carson's discovery responses established a prima facie case of nonuse as of the filing dates of the underlying applications, and Carson's evidence failed to overcome it. Carson submitted a declaration that contained only conclusory statements that “[e]ach year from 2015 through the present,” he has provided “licensing of advertising slogans and cartoon characters” under both proposed marks “to a wide range of customers located throughout the United States." However, he identified no such customers.

Pages from Carson's website and social media accounts made no reference to "licensing of advertising slogans or cartoon characters." In short, he offered no probative documentary evidence that he ever engaged in such licensing.

The only documents in the record that include the proposed marks and also refer in any way to the recited service are undated documents (the specimens of use) that Applicant has identified in the applications as “advertising.” Even if the “specimens could be found to be technically acceptable” for advertising the service, this does not suffice to establish the mark was actually used in commerce for the service, where “there is no corroborating evidence that applicant offered any of the services identified in the application[s] at the time he filed [them].” See Nationstar Mortg., 112 USPQ2d at 1373-74.

The Board observed that "an applicant’s 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.” Aycock, 90 USPQ2d at 1308; see also Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1029 (Fed. Cir. 2017)."

And so, the Board sustained the opposition.

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TTABlogger comment: I'm not sure why this highly fact-based decision was deemed precedential.

Text Copyright John L. Welch 2021.