Tag Archives: ttab

Services Must Be Rendered, Not Merely Available, To Support The Registration of A Trademark

On March 2, 2015, in a case of first impression before the Federal Circuit, the Court directly addressed “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127.”  The Court said no.

In 2008, David Couture filed a trademark application for PLAYDOM for writing and production services. As part of the use based application pursuant to Lanham Act. § 1(a), Couture submitted a screenshot of a web page bearing the trademark to the United States Patent and Trademark Office (USPTO) as proof of use of the mark in connection with the identified services.  That page simply had the PLAYDOM name and stated “[w]e are proud to offer writing and production services for motion picture film, television, and new media.”  The USPTO approved the application in 2009, but no services were actually provided until 2010.
One month after PLAYDOM’s application was approved, Playdom, Inc. (a different company) filed a trademark application for the identical trademark, PLAYDOM.  The new application for PLAYDOM was refused based on the Couture application for PLAYDOM. In response to the refusal, Playdom sought cancellation of Couture’s now issued registration for PLAYDOM before the Trademark Trial and Appeal Board (“TTAB”).   Despite Couture’s belief that the availability of the services was sufficient to support the claim of use, the TTAB granted the cancellation of the Couture registration stating that Couture “‘had not rendered his services as of the filing date of his application'” because he had “‘merely posted a website advertising his readiness, willingness and ability to render said services.'”  (emphasis added)  Accordingly, the original application was void ab initio.  Couture appealed to the Federal Circuit, which upheld the decision of the TTAB.
In discussing its decision, the Federal Circuit noted that in its prior decision, Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed.Cir.2009), it stated that “[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended.”  The Federal Circuit, however, went on to clarify that it did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce.  Rather, the Federal Circuit stated that the “statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered.'” 15 U.S.C. § 1127 (emphasis added).  Thus, in the Couture case, the mere advertising of a service “that the applicant intends to perform in the future will not support registration.”
The Couture decision emphasizes the importance of proper trademark use at the time of filing to support a resulting trademark registration.  Since the Couture application was based on use, the trademark had to have been in acceptable use on the date the application was filed.  If there is no use on the filing date of an application, the application can be filed based on an-intent to use the trademark, wherein once perfected, trademark rights are protected as of the filing date.  As seen from this case, the consequences for failing to file the appropriate application can be catastrophic.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues.  As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation.  Anna can also assist your company in all manner of intellectual property protection.  For more information, visit her website, or contact Anna at (818) 946-2300, or email her at anna@apogeelawgroup.com.  This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.

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TTAB Finds Fraud; Upholds Trademark Opposition to “NATIONSTAR”

Obtaining a federal registration for a trademark is important because it helps to protect a company’s brand.  Due to the importance of receiving a federal registration, the truthfulness of the underlying application for that trademark is paramount.  When filing a trademark application, an applicant must execute a declaration that attests to the truthfulness of the content of the application.  This includes attesting to the fact that the trademark is being used in commerce in connection with the goods or services listed in the application.  If the statements in the declaration are false, any resulting registration can be challenged on the basis of fraud.  If a claim of fraud is brought by a challenger, serious consequences for the registrant can follow.  Such was the case in NationStar Mortgage LLC v. Mujahid Ahmad.

In a precedential opinion, the Trademark Trial and Appeal Board (TTAB) issued a finding of fraud in the opposition matter entitled NationStar Mortgage LLC v. Mujahid Ahmad.  While a finding of fraud is rare, it does happen from time to time.   In the case re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir 2009), the Federal Circuit articulated the current standard for fraud in procuring a trademark registration.  In the words of the Federal Circuit in Bose, “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with intent to deceive the USPTO.”

The NationStar Mortgage matter involved the attempted registration of the trademark “NATIONSTAR” for “mortgage brokerage,” “insurance brokerage,” and other real estate and mortgage related services.  In April of 2005, long prior to filing the trademark application, the applicant, Mujahid Ahmad, a Virginia real estate agent, registered multiple domain names using derivations of nationstar, for example, nationstarmortgage.com and nationstar.org.  On April 11 and April 18, 2006, counsel for opposer, NationStar Mortgage, sent letters to Mr. Ahmad offering to purchase two of the domains.  The offer was rejected, and within a few days of the offer, Mr. Ahmad filed a use based trademark application for “NATIONSTAR” for a number of services, including real estate brokerage services and insurance brokerage services.  By filing the application based on use, Mr. Ahmad declared that the mark was in use for all the identified services at the time of filing the application.

Fraud in the procurement of a trademark registration must be proven via clear and convincing evidence, and here, the facts were the applicant’s undoing.  The opposer, NationStar Mortgage, alleged that Mr. Ahmad never used the NATIONSTAR MORTGAGE mark in connection with the identified services, and that he “submitted a fabricated specimen that was not used in commerce at least as early as the application filing date.”  In fact, Mr. Ahmad admitted during testimony that he was not a real estate broker, not an insurance broker, nor did he offer mortgage insurance.  While Mr. Ahmad claimed he was the owner of a company called NationStar Mortgage Inc. and used the name in connection with his services as a real estate agent, he also testified that he was unaware of any profits for the company and did not have a bank account.  Mr. Ahmad also admitted that all of the materials submitted to the USPTO were created on his own computer, and by a third party printer; however, he could not produce records of professional printing for the supposed business cards and postcards that were sent to clients or otherwise used commercially.

The TTAB noted that it was skeptical of applicant’s testimony and claims, particularly because, although the applicant was not a lawyer with expertise in trademark law, he was a real estate agent and was familiar with the laws surrounding mortgage brokers and insurance brokers, and would have certainly been aware that he was not licensed as a broker of mortgages or insurance.  The TTAB stated that just because Mr. Ahmad filed his own application, it did not afford him “a free pass to disregard the straightforward requirements of a use-based application and the solemnity of the application declaration that he signed subject to criminal penalties.”

The TTAB was also clear that the facts in this case were inconsistent with merely a mistake or misinterpretation of the law by a non-attorney applicant.  In the words of the TTAB, “this record does not support a finding that applicant’s misrepresentation was occasioned by mere inadvertence or reasonable mistake or misunderstanding….While fraud will not lie if a statement, though false, was made with a reasonable and honest belief that it was true, there are limits to what may be claimed in good faith.”

In the end, the TTAB sustained NationStar’s opposition.  In addition to the obvious lessons in regard to avoiding fraudulent filings, this case highlights the importance of using an experienced attorney to prepare trademark applications.

If you have questions about filing a trademark application, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-minded expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks.  In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board.  Anna can also assist your company in licensing matters, including drafting and negotiation of trademark licensing agreements.  For more information, visit her website, or contact Anna at (818) 488-8146.  This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.