Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 1
• Publication year: 2022
• Author: Jane Shay Wald
• topic: Advertising Law,Charity and Non-Profit Law,Trademark

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald
Irell & Manella LLP

The Examining Attorney Gave Applicant A Chance To Amend To Claim Intent-To-Use To Fix A Faulty Stance

Applications Based On Use For Services Not Done Ignore The Law. There's No Excuse Appeals Cannot Be Won

The Board sustained an opposition based on nonuse of Applicant's mark as of the use-based application filing dates; the Application was void ab initio. "This case involves aspiring astronauts vying to be the first humans to Mars, who have clashed over the term 'MARS GENERATION.' "Applicant seeks registration of the standard character marks I AM THE MARS GENERATION and WE ARE THE MARS GENERATION for "licensing of advertising slogans and cartoon characters." Applicant's daughter, Alyssa Carson, "is an aspiring astronaut who promotes her desire to be the first human to visit Mars.

Opposer is an organization funded by aspiring astronaut Abigail Harrison, who describes her childhood dream as being the first person to set foot on Mars. Opposer has two registrations for MARS GENERATION, with "Mars" disclaimed. One is for outreach programs, being seminars and online media, enabling teenagers and young adults to obtain training, guidance support and information about space exploration and space programs. The second is for clothing and "novelty items," being cloth patches with information to stimulate public interest in space explorations and space programs.

The Board found Applicant had submitted no evidence whatsoever of use of its applied-for marks for the services claimed, which were limited to "licensing of advertising slogans and cartoon characters." All of the Applicant's "evidence" was web data and social media pertaining to the space-related activities and interests of Alyssa Carson. Even those mentioning wording I AM THE MARS GENERATION or WE ARE THE MARS GENERATION had no relation to licensing of advertising slogans and cartoon characters. Where a Sec. 1(a) application is opposed on the ground that there was no use in commerce on any of the goods or services specified when the application was filed, the remedy is to hold the application void. Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009), that holds: "The registration of a mark that does not meet the use requirement is void ab initio."

[Page 29]

The Mars Generation, Inc. v. Albert G. Carson IV, Opposition No. 91224726 (TTAB October 22, 2021).

Another Case Where Filing Under 1(b) Not 1(a) Would Have Left The Party Smiling And Not Losing Here, Today

The Board upheld the Examining Attorney's determination that Applicant's Sec. 1(a) (actual use) application was void ab initio for nonuse of the proposed mark in commerce on any of the recited services. The use-based application was for the mark HAVE SOME DECENCY for charitable fundraising and other charitable services. However, the Applicant's web site was not active. The first webpage was placeholder text known as 'lorem ipsum,' used to mimic real copy. The sentence "We are not currently accepting donations" appears under the heading "make a donation." A third webpage stated: "We are currently looking for volunteers to help shape our programs and get our organization off the ground."

The Board agreed that these webpages were evidence that Applicant was, at best, preparing to engage in the services claimed, but was not yet providing any of the services. The Applicant never stated in her submissions that she offered the services identified in the application, nor did she provide any evidence that services were being offered. Incorporation of her organization, applying for tax-exempt status, and registration of a domain name give no service mark rights.

The Board relied on the established body of case law holding that even advertising of a mark for services to be available at some time in the future could not serve as a basis to register. In Couture v. Playdom, Inc., 778 F. 3d 1379 (Fed. Cir. 2015), the applicant filed an application to register the service mark PLAYDOM on an actual use basis, Sec. 1(a). It submitted as its specimen a screen shot of its website, being a page that stated: "[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com." The Playdom website included the notice "Website Under Construction." No services were provided until after the application was filed. This did not satisfy the "use" requirement, because it was a solicitation to provide services not yet provided to anyone. In the HAVE SOME DECENCY case, Applicant wasn't even advertising the non-existent services.

In Footnote 13, the Board noted that the Examining Attorney had twice suggested the Applicant amend her application to one seeking registration on an intent-to-use basis, under Sec. 1(b). If she had done so, "she would have had the chance to preserve her application and its filing date, and at a later date, if bona fide use of her mark had begun, make the necessary showing of use to obtain a registration."

(Unsurprisingly, Applicant was not represented by counsel).

In re Alessandra Suuberg, Ser. No. 88234650 (TTAB December 10, 2021).

Next Time Maybe Think More, Dear When Advertising "Think More Beer."

The Board upheld the Examining Attorney's refusal to register the mark DRINK MORE BEER, standard characters, for container closures, for failure to function as a trademark. Applicant's specimens were a screenshot showing initials NNBC in a relatively bold font with bottom row images for "compression molded caps," "growler caps," and "metal closures." The image for the growler caps shows bottle caps with the proposed mark, DRINK MORE BEER embossed around a design of a beer mug. The Board agreed that relevant consumers searching for growler caps would view the proposed mark as an example of how their own marks might look on Applicant's growler caps. Applicant did not help its case by the brochure specimen referring to the DRINK...