Three Recent TTAB Oppositions Sustained on the Ground of Non-use

Here are three recent TTAB rulings, each sustaining an opposition based upon non-use of the opposed service mark. Remember, if a mark that is the subject of a Section 1(a) application is not in use in commerce as of the filing date, or not in use as of the filing date of an Amendment to Allege Use or a Statement of Use in a Section 2(b) application, the application is void ab initio. For a service mark, the services must be rendered in order to qualify as "use in commerce" as defined in Section 45 of the Lanham Act.

PayNearMe, Inc. v. Substring, LLC, Opposition No. 91277497 (January 18, 2024) [not precedential] (By the Board). [Opposition to registration of PAYFORME for various financial transaction services. The Board entered judgment summarily because there was "no evidence, documentary or otherwise, showing that Applicant used the mark in commerce in connection with any of the services identified in its application prior to December 1, 2021," the date applicant filed its Amendment to Allege Use. "None of the activities described by Applicant in its discovery responses, including meeting with potential merchants, partnering with a third-party payment processing entity, and testing its services, constitute rendering of the services specified in the application, and consequently do not show use in commerce." "Applicant at best used the mark for promotional and corporate organizational activities only."]

Cavalier Rescue of Alabama, Inc. v. Christine Bruce Meager, Opposition No. 91248564 (January 26, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen) [Opposition to registration of THE CAVALIER RESCUE for "Animal rescue services, namely, arranging for the adoption of rescued animals." Applicant "[did] not clearly testify that she actually did [arrange for an adoption] as of the Application filing date [June 29, 2018] or otherwise, nor does the record show corroborating evidence of such activities in 2018." Her testimony "reflected a mere willingness to provide the recited services, or preparation to offer the services, which does not suffice."]

BlackBerry Limited v. Hotberry LLC, Opposition No. 91272712 (January 30, 2024) [not precedential] (By the Board) [Opposition to registration of HOTBERRY for "planning, design and management of information technology systems." The Board entered judgment summarily because "[t]he only actual use of the HOTBERRY mark that Applicant contends was made before the filing date of the involved application [July 19, 2020] is use of the mark in connection with 'a technology platform to distribute residential financing to new homebuyers.'" "The evidence of such use, however, is limited to Applicant securing a residential property to sell through an investor in an effort to begin its A/B testing of the new financing plan,” Applicant gauging interest in the residential financing concept via a Craigslist ad in 2014, Applicant’s participation in a start-up competition in 2015 and 2016, and Applicant’s publication of a website in 2016 promoting the residential financing services. This evidence does not support that Applicant ever provided such services."

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TTABlogger comment: Take-away. Don't try to register a use-less mark?

Text Copyright John L. Welch 2024.