Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation
In a somewhat muddled decision, the Board affirmed a refusal to register the proposed mark HAVE SOME DECENCY for various charitable fund raising services on the ground that the mark was not in use as of the applicant's Section 1(a) filing date. Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. In re Alessandra Suuberg, 2021 USPQ2d 1209 (TTAB 2021) [precedential] (Opinion by Judge Albert Zervas).
In an application based on use in commerce under Section 1(a) of the Lanham Act, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015). According to Section 45, a mark is used in commerce "on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services." [Emphasis added].
Statements on Ms. Suuberg's website indicated that she was not accepting donations and was looking for volunteers to "get our organization off the ground." Ms. Suuberg explained that, at the time of her trademark application filing, she had recently completed a post-baccalaureate premedical program, incorporated a non-profit organization, applied for tax-exempt status, and registered a domain name.
The Board found the Couture case to be relevant: there, the applicant had not rendered his entertainment services in commerce as of his filing date, but had merely advertised his "readiness, willingness and ability" to do so. The CAFC declared 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." Couture, 113 USPQ2d at 2042-43.
Just as in Couture [TTABlogged here], where the applicant’s activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application, Applicant here was in the nascent stage of developing her business when she filed her application. She had just finished her education and had just formed an entity to develop her vision of “encouraging 'decency' in medicine and medical research." Applicant’s incorporation of her organization, application for tax-exempt status and registration of her domain name did not accord her service mark rights. See Stawski v. Lawson, 129 USPQ2d 1036, 1045 (TTAB 2018) (citing Brookfield Comms., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999); In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985)).
The Board concluded that none of the applicant's preparatory measures amounted to use in commerce. And so, the Board deemed the application void ab initio.
Read comments and post your comment here.
TTABlogger comment: I think the Board should have made clear that, regardless of whether she advertised her services, the statute requires that the services be rendered before the filing of a Section (a) application. Here's a question for you: suppose a restaurant opens for business on day 1, but the first customer is served on day 2. What is the first use date for the restaurant's services?
Text Copyright John L. Welch 2021.
posted by John L. Welch @ 12/13/2021
10 comments
10 Comments:
I believe the restaurant used the mark on day one. It was open for business and ready to serve customers on day one.
Ready, willing, and able isn't enough, according to the Couture case.
How is this precedential? This has always been the case for service marks, hasn't it? They must be rendered in commerce before you can claim use? I'm just not seeing the precedential aspect here.
And I'd say day 2 is the day the restaurant began use - when they actually served the first customer (though they could clearly choose an earlier date for "date of first use")
To add on to the restaurant example. which I think also applies,at least logically, to a retail establishment, I would say that part of the service being rendered to the public is the provision of the establsihment itself and everything that it houses. Whether a particular person was "served" is not the only service. Someone could have come in and looked at the menu, and left. The food would also have to be prepared in advance to some extent. Someone could also come in to a store and not buy anything. When it comes to more abstract things, like consulting services, clearly no consulting is happening until an actual engagement occurs. In contrast, even being able to browse an online marketplace is providing a service--the service is that people are able to search for the goods, and even window shopping is part of shopping.
Having had a number of restaurant clients, I believe date of first use is day 2 when services were actually rendered. However, is the customer an in-state or out-of-state resident? For "use in commerce" for federal registration, would not the first customer, or other customer(s) from day 2, need to be from a state other than applicant's state? (Interstate commerce)
This is a decision that provides little legal analysis of “use” or rendering”. Zervas simply cites a few cases and decides the mark had never been used based on these facts. There is no discussion of what it means to “render” a service.
I know many attorneys who feel the "offering" of the services starts the use. This case does not resolve that issue, because she apparently did not pass the first part of the test.
I find it quite interesting that so many trademark attorneys have different opinions on the issue of use. And people still think "trademark law is pretty straightforward."
This case shows why you should have a receipt for the first sale. We are starting to include redacted receipts of the first sale, just to have them in the USPTO record, in part to protect against claims in an opposition of "bona fide" use and against third parties who may try to file a cancellation later on such grounds.
The Applicant is pro se! Why did she waste all this time over a settled point? A lot of trademark attorneys know that services have to be rendered to qualify for use in commerce, but I bet 100% pro se applicants do not know this. Why newbies file their own trademark applications is beyond perplexing.
As noted in the opinion, amending to a 1(b) filing basis would have been an easy fix for the applicant.
"rendering" is not the same thing as offering. Just like offering a product for sale is not the same thing as selling the product. https://www.merriam-webster.com/dictionary/render
And if it takes a restaurant until day 2 until someone actually decides to order some food, that does not seem like a promising start. :)
"The Applicant is pro se! Why did she waste all this time over a settled point? A lot of trademark attorneys know that services have to be rendered to qualify for use in commerce, but I bet 100% pro se applicants do not know this."
I am glad you qualified this with "A lot of trademark attorneys know..." I am still amazed that some do not, just like some still do not understand that "use in commerce" means use with respect to ALL of the goods/services listed in the application - not just one in each class.
I would love to see the USPTO modify its forms so that you have to individually acknowledge use (or a bona fide intent to use) for each listed good or service, for both registration and maintenance purposes.
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