Monday, June 12, 2017

CAFC Affirms TTAB, Upholds Cancellation of Individual's Registration of Service Mark Due To Non-Ownership

The CAFC affirmed the TTAB's decision [TTABlogged here] granting a petition for cancellation of a Supplemental Registration for the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION for  various "veterinary education services." The court endorsed the legal framework applied by the Board in resolving ownership disputes when a member has departed a group, and it found that substantial evidence supported the Board's findings that Registrant Sheila Lyons never owned the mark. The court agreed with the Board's conclusion that her underlying application was consequently void ab initio. Sheila Lyons, DVM v. The American College of Veterinary Sports Medicine and Rehabilitation, 123 USPQ2d 1024 (Fed. Cir. 2017) [precedential].

Lyons, along with five other equine veterinarians, formed an organizing committee for the purpose of creating a veterinary specialist organization (VSO) for treating athletic animals. The committee began using the subject mark by 2002. Lyons was dismissed from the organizing committee in 2004. She then applied to register the mark and in 2006 received a Supplemental Registration.

In 2010, the American Veterinary Medical Association (AVMA) granted provisional recognition to the proposed VSO under the name "American College of Veterinary Sports Medicine and Rehabilitation." The College administered its first certification test in 2012 and has conducted annual meetings and continuing education programs since then.

The CAFC found no error in the framework applied by the Board in resolving this ownership dispute, a framework developed for situations in which a member of a group has departed and (in the absence of a formal agreement governing ownership of the mark) both the member and the remnant group claim ownership of the mark. See, e.g., Wonderbread 5 v. Gilles, 115 U.S.P.Q.2d 1296, 1305 (TTAB 2015); see generally, 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:45 (4th ed. 2015). Although various sources enunciated the relevant factors differently, they all include three main factors:

(1) the parties' objective intentions or expectations;

(2) who the public associates with the mark; and

(3) to whom the public looks to stand behind the quality of goods or services offered under the mark.

The Parties' Collective Intent: Although Lyons may have subjectively believed that she owned the mark and would control the VSO once formed, the objective expectations of the parties were that the organizing committee would form the VSO under the chosen name, not that Lyons would render personal services under the mark. At no time did Lyons communicate to other committee members her belief that she owned the mark, any prior use of the mark, or any objection to the committee naming the VSO after the mark. Thus her objectively manifested expectations contradicted any subjective notion the she owned the mark. Th CAFC concluded that substantial evidence supported the Board's determination that "the collective expectation of the parties, as objectively manifested, was that Lyons and the rest of the organizing committee would form an AVMA-accredited VSO with a name that became the mark."

Who the Public Associates with the Mark: Lyons cited as her first use of the mark a paper, written in the future tense, indicating her future plans to form a VSO under the name at issue. However, the mere preparation and publication of future plans (assuming her paper was published) do not constitute use in commerce. See, e.g., Aycock Engineering, Inc. v. Airflite, Inc., 90 USPQ2d 1301 (Fed. Cir. 2009). Moreover, Lyons never advertised the mark, never maintained a website, has no employees, no volunteers, no students, and no certification program.

On the other hand, the College has certified at least 115 veterinarians, established 13 active residency programs in veterinary colleges, and conducted conferences and continuing education programs. The College has obtained corporate sponsorships from companies in the veterinary industry, has received considerable attention in the press, and is listed on the AVMA website under the mark.

The CAFC concluded that substantial evidence supported the Board’s finding that the relevant public looks to the College, not to Lyons, for services in connection with the mark "because Lyons’s use of the mark has not created distinctiveness inuring to Lyons."

To Whom the Public Looks for Quality Control: Lyons provided no evidence that she obtained certification from the AVMA, or that she has students enrolled in educational services offered under the mark, or that she offers any certification programs at all. The College, on the other hand,earned AVMA accreditation so that the veterinarians it certifies may hold themselves out as AVMA-approved specialists. Furthermore, "as the Board observed, the College’s very name carries the 'AVMA's seal of approval' because many AVMA-accredited VSOs, and none that are not AVMA accredited, have names beginning with the words "American College of Veterinary.'"

The CAFC concluded that substantial evidence supported the Board’s finding that "members of the public who seek out veterinary sports medicine and rehabilitation services will rely upon the College’s certification as evidence of a particular veterinarian’s expertise."

Conclusion: In summary, the CAFC held that the Board’s findings were supported by substantial record evidence. "One might even say that the lion’s share of the evidence supports the Board’s decision."

Although Lyons may have been the first to use the mark, the record shows that her use never rose to the level of use in commerce. Rather, she initiated efforts to form an AVMA-accredited VSO with the name of the mark, and that endeavor moved forward without her after she was dismissed from the organizing committee. Her involvement with the committee may have been the very reason that the committee adopted the mark; nevertheless, it is clear from the record that the College used the mark in commerce before Lyons, and Lyons cannot in effect appropriate it. The Board’s findings to that effect were supported by substantial evidence.

Read comments and post your comment here.

TTABlog comment: Although the challenged registration was more than five years old, a Supplemental Registration may be cancelled at any time under Section 24(2) of the Trademark Act.

Text Copyright John L. Welch 2016.


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