Tuesday, March 12, 2024

Finding MRS. COLORADO Use-less, TTAB Grants Petition for Cancellation

The Board granted a petition for cancellation of a registration for the mark MRS. COLORADO, finding that Respondent Abundance Productions had not used the mark in commerce in connection with "Entertainment in the nature of beauty pageants" on or before the filing date of the underlying application. The registration was therefore void ab initio. Miss United States of America LLC, DBA United States of America Pageants v.Abundance Productions, LLC, Cancellation No. 92071814 (March 8, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

Abundance had a license from Mrs. Patricia Dampier to use the mark MRS. COLORADO for its beauty pageant, but that license was terminated in 2015. Respondent was permitted to use the mark until December 2017. The licensor allowed the registration to expire in February 2018. In March 2018, Abundance filed its Section 1(a) application to register the mark, claiming use since 2008. The subject registration issued in November 2018.

Petitioner contended that Abundance was not using the MRS. COLORADO mark in commerce as of the filing date of the underlying application because it had not yet rendered any pageant services under the mark, and that any prior use under the license inured to the benefit of the licensor, not to Abundance.

The Board observed that, under Section 45 of the Trademark Act, a service mark is in use in commerce "(1) when it is used or displayed in the sale or advertising of services; and (2) the services are rendered in commerce ...." [Emphasis supplied].

“Mere publicity about services to be rendered in the future does not lay a foundation for an application. The statute requires not only the display of the mark in the sale or advertising of services but also the rendition of those services in order to constitute use of the service mark in commerce.” Intermed Comms., Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977); see also Aycock Eng., 90 USPQ2d at 1308. “Rendering services requires actual provision of services.” Couture v. Playdom, 113 USPQ2d at 2044 (citing MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:103 (4th ed. Supp. 2013)).

Abundance argued that, along with the application to register the MRS. COLORADO mark, it submitted a webpage specimen displaying the words "MRS. COLORADO PAGEANT" at the top and a pink rectangle superimposed with the words "BUY TICKET HERE," through which the public could purchase tickets for the MRS. COLORADO pageant.

The Board, however, concluded that Abundance did not render its entertainment services until its 2018 MRS. COLORADO Pageant actually took place, on or about April 16, 2018. The Board further found that the licensed use of the mark under the prior registration "does not qualify as rendering 'Entertainment in the nature of beauty pageants.'" 

Under the terms of the license agreement, all of the goodwill pertaining to the Prior Registration belonged to Mrs. Dampier [the licensor], and all rights resulting from the use of the Prior Registration (sic) inured to the benefit of Mrs. Dampier.

The Board therefore found that "the underlying application and resulting registration for Respondent’s Mark is void ab initio." It declined to entertain Abundance's laches defense:

“[L]aches is not available as a defense in an action to remove a registration which was clearly void ab initio.” Wandel Mach. Co. v. Altoona Fam Inc., 133 USPQ 410, 410-11 (TTAB 1962) (citation omitted); see also Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 153 n.5 (TTAB 1973).

Read comments and post your comment here.

TTABlogger comment: Should have filed an I-T-U application?

Text Copyright John L. Welch 2024.


At 11:11 AM, Anonymous Anonymous said...

Seems like an ITU might have saved the application. But that does seem like a harsh outcome. Was the “related parties” provision used to try and have the use attributed to both?


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