If you advertise a service, take preliminary steps to render the service, or both, and apply to register the service mark in the U.S. Patent and Trademark Office (USPTO) based on a claim that you have commenced use of the mark before you actually are in a position to offer the service in U.S. commerce, your application may be rejected.
After Alessandra Suuberg completed a graduate premedical program and a research assistant position in genetic and psychology research, she incorporated a non-profit organization, applied for it to be classified as a tax-exempt organization, registered a domain name, and concurrently filed a trademark application to register the phrase HAVE SOME DECENCY as a service mark for charitable fundraising services and financial assistance to disabled and disadvantaged individuals. Her application was based on a claim that she had started using this mark in commerce on the same date as the application’s filing date, and she submitted a webpage displaying the phrase as a specimen of trademark use.
Specimen of Use filed with the Application
The Examining Attorney refused registration on the grounds that (1) she had not used this mark in commerce in connection with the identified services, and (2) the mark is a slogan that does not function as a service mark. Ms. Suuberg appealed to the Trademark Trial and Appeal Board (TTAB).
The TTAB issued a precedential decision affirming the non-use refusal without reaching the failure-to-function refusal. The TTAB pointed out that a use-based application requires that the mark be in use in commerce on or in connection with the listed goods and services as of the application’s filing date. It also quoted the Trademark Act’s definition of “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Lanham Act § 45, 17 U.S.C. 1127.
In this case, the applicant’s specimen showed that she had advertised the services on her website. But her website also contained pages displaying scrambled Latin lettering to mimic real copy, a statement that she was currently looking for volunteers, and the specific statement “We are not currently accepting donations.” The TTAB concluded that the preparatory measures of Ms. Suuberg, including the website advertising, did not relate to an existing service which had already been offered to the public. This made the use-based application void from the beginning.
The TTAB noted that the Examining Attorney had suggested on two occasions that Ms. Suuberg amend her application to seek registration under the intent-to-use provisions of the Trademark Act. The TTAB commented that, had she done so, she would have had the chance to preserve her application’s filing date and her ability to obtain the registration after she had made bona fide use of the mark in commerce.
In re Alessandra Suuberg, Application No. 88234650 (T.T.A.B. December 10, 2021)
Author’s Note: The Examining Attorney is not the only one who can raise the issue of nonuse of an applied-for or registered mark.
- During the examination period, anyone can bring this issue to the USPTO’s attention by way of a Letter of Protest.
- After publication, anyone with standing can start an opposition proceeding.
- Within the first five years after registration, anyone can bring an “Ex Parte Reexamination” proceeding or can start a cancellation proceeding.
- Between three and ten years after registration, anyone can bring an “Ex Parte Expungement” proceeding.
- The Director of the USPTO also may start such a proceeding challenging a registration on this issue.
See our Alert titled “Regulations Implement the Trademark Modernization Act of 2020”.
The Suuberg case concerned a use-based application to register a mark not actually in use in commerce as of the filing date. But that need not be the end of the story.
Assuming the slogan actually could function to designate source (See our Blog titled “Overcoming a ‘Failure to Function’ Trademark Registration Refusal”), the preparatory activities might be characterized as “use analogous to trademark use.” This might give Ms. Suuberg priority in an opposition, cancellation or infringement action against a later user of the same slogan.
Furthermore, before making use of the mark in commerce, an applicant can base a U.S. application either on an intent to use the mark in commerce (followed by bona fide use in commerce), or on non-U.S. rights (as to which a registration may be issued without a showing of use in commerce). (See our related Blog posts titled “How to Defeat a Claim of Abandonment for a Never-Used Registered Mark” and “How A Non-U.S. Trademark Applicant Establishes a Bona Fide Intent to Use in U.S. Commerce”)
For further information, please contact Joel Karni Schmidt or your CLL Attorney.