In an 80-page opinion, the TTAB granted a petition for cancellation of a registration for the mark AUK AMERICAN UNIVERSITY OF KUWAIT & Design (shown immediately below) for “educational services, namely, providing courses of instruction at the college level,” finding that respondent had not used the mark in commerce prior to the filing date of its underlying application. The Board also denied respondent’s counterclaims attacking petitioner’s registrations for AMERICAN UNIVERSITY on the grounds of genericness and, alternatively, lack of acquired distinctiveness. This blog post will hit the highlights. American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Although the parties agreed (in 2018, ten years after the petition for cancellation was filed) to submit the case under the Accelerated Case Resolution (ACR) procedure, the first 25 pages of the opinion deal with various evidentiary objections that, the Board suggested, could have been resolved by the parties when they formulated their ACR agreement.

Genericness of “AMERICAN UNIVERSITY”: Respondent contended that “AMERICAN UNIVERSITY” is generic, either as a common term for a style of education, or due to widespread use by unrelated third parties.

Respondent argued that AMERICAN UNIVERSITY was generic when petitioner adopted it in 1892, because “two other schools were using AMERICAN UNIVERSITY to offer college-level instruction:” the American University at Cairo and the American University of Beirut. The Board noted, however that there was no evidence that “any appreciable segment of the United States population was aware of either foreign institution.” Moreover, such earlier uses “have little bearing on how the relevant public in the United States” views the mark today.

Respondent urged that the term “American University” is used abroad to denote a style of education, but respondent’s evidence failed to show that the term would be so understood by United States consumers. Petitioner submitted “150 representative” media items showing unsolicited use of AMERICAN UNIVERSITY to refer to petitioner. At best, respondent’s limited evidence demonstrated “mixed use” of the term; such use supports a finding that the term is not generic.

Respondent submitted various academic and scholarly articles referring to institutions in this country as “American universities,” or use the term “American-style universities” to describe the attempts by foreign institutions to emulate the characteristics of U.S. universities. The Board found that this evidence, at best, shows geographically descriptive use of the words “American university(-ies)” to describe foreign universities, and “American-style” to describe certain characteristics of universities, but it does not demonstrate that petitioner’s mark is generic.

Respondent also argued that AMERICAN UNIVERSITY has become generic due to petitioner’s failure to police, pointing to “more than 70 distinct users” with which petitioner appears to have no relationship. The Board was not impressed. The “vast majority” of these entities are located overseas “and would be expected to attract students primarily from their regional locale.” Petitioner submitted testimony regarding policing of its mark, as well as evidence of agreements with other entities, containing various restrictions regarding use. The Board found that petitioner’s enforcement efforts weigh against a finding of genericness, and it concluded that AMERICAN UNIVERSITY is not generic due to petitioner’s alleged failure to police its mark.

And so the Board ruled that AMERICAN UNIVERSITY is not generic for petitioner’s services. Although it may be an “apt” name for a university located in this country, “[a]ptness is not sufficient to prove genericness.”

Acquired Distinctiveness for AMERICAN UNIVERSITY: Respondent contended that the Section 2(f) claim in each of petitioner’s registrations was improper because petitioner was not the “substantially exclusive user” of the mark, and further that petitioner could not prove acquired distinctiveness.

The Board, however, found that AMERICAN UNIVERSITY has acquired distinctiveness, based on petitioner’s use of the mark for more than 100 years, extensive advertising, media exposure through sports events, radio programming, sales of branded merchandise, number of enrolled students and graduates, and unsolicited media coverage.

The Board therefore denied respondent’s counterclaims.

Respondent’s Nonuse: The Board declined to reach petitioner’s Section 2(d) claim because it found that respondent did not use its mark in commerce within the meaning of Section 45, prior to the filing date of its underlying, use-based application in 2006.

The Board observed that in a use-based application, if an applicant fails to use the mark “in commerce” on any of its goods or services in a particular class, the application and resulting registration are void ab initio as to the entire class on the ground of nonuse.

For service marks, the “use in commerce” requirement is met when (1) a mark is “used or displayed in the sale or advertising of services” and (2) either (i) the services are “rendered in commerce” or (ii) the services are “rendered in more than one State or in the United States and a foreign country and the person rendering those services is engaged in commerce in connection with the services.”

The Board found that respondent failed to meet either prong of the “use in commerce” test. Respondent failed to prove use of its mark in the sale or advertising of its services prior to its filing date. It offered only unsupported declaration testimony. The Board found no authority for the proposition that respondent’s advertising abroad that extended to the U.S. satisfied the first prong of the test.

Likewise, respondent fail to satisfy the second prong of the test: there was no corroboration for respondent’s statements that students from the United States attended respondent’s university. Moreover, services rendered only in a foreign country “are not the type of commerce that Congress may regulate, even if the services are provided to citizens of the United States while in the foreign country.”

The Board declined to follow the reasoning of the Fourth Circuit in the Casino de Monte Carlo case, an infringement and cybersquatting action where the court ruled that defendant’s advertising of its services in this country coupled with evidence that United States citizens went to Monaco and gambled at the casino, constituted trade that Congress may regulate under the Commerce Clause. Int’l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359, 66 USPQ2d 1705, 1715-16 (4th Cir. 2003). Moreover, here there was no evidence of U.S. advertising or travel by U.S. citizens during the relevant time frame.

Respondent’s identified services were rendered under the mark entirely in Kuwait prior to the filing date of the application maturing into the subject registration. This does not constitute foreign commerce. To the extent Respondent suggests that its use “affects” foreign commerce, we decline to extend by analogy the holdings in those cases finding commercial activity, conducted wholly within a single state in the United States, to be regulable by Congress on the basis that it affects interstate commerce. With respect to international borders and foreign commerce, “[t]he concept of territoriality is basic to trademark law.”

Therefore, the Board concluded that respondent’s registration is void ab initio, and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: The territoriality principle suffered a setback in the Bayer v. Belmora litigation. Do you think respondent will file a new application? Should the Board have gone ahead and decided the Section 2(d) issue?

Text Copyright John L. Welch 2020.