In a somewhat muddled decision, the Board affirmed a refusal to register the proposed mark HAVE SOME DECENCY for various charitable fund raising services on the ground that the mark was not in use as of the applicant’s Section 1(a) filing date. Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. In re Alessandra Suuberg, Serial No. 88234650 (December 10, 2021) [precedential] (Opinion by Judge Albert Zervas).

In an application based on use in commerce under Section 1(a) of the Lanham Act, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015). According to Section 45, a mark is used in commerce “on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” [Emphasis added].

Statements on Ms. Suuberg’s website indicated that she was not accepting donations and was looking for volunteers to “get our organization off the ground.” Ms. Suuberg explained that, at the time of her trademark application filing, she had recently completed a post-baccalaureate premedical program, incorporated a non-profit organization, applied for tax-exempt status, and registered a domain name.

The Board found the Couture case to be relevant: there, the applicant had not rendered his entertainment services in commerce as of his filing date, but had merely advertised his “readiness, willingness and ability” to do so. The CAFC declared that “an applicant’s preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark.” Couture, 113 USPQ2d at 2042-43.

 

Just as in Couture [TTABlogged here], where the applicant’s activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application, Applicant here was in the nascent stage of developing her business when she filed her application. She had just finished her education and had just formed an entity to develop her vision of “encouraging ‘decency’ in medicine and medical research.” Applicant’s incorporation of her organization, application for tax-exempt status and registration of her domain name did not accord her service mark rights. See Stawski v. Lawson, 129 USPQ2d 1036, 1045 (TTAB 2018) (citing Brookfield Comms., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999); In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985)).

 

The Board concluded that none of the applicant’s preparatory measures amounted to use in commerce. And so, the Board deemed the application void ab initio.

 

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TTABlogger comment: I think the Board should have made clear that, regardless of whether she advertised her services, the statute requires that the services be rendered before the filing of a Section (a) application. Here’s a question for you: suppose a restaurant opens for business on day 1, but the first customer is served on day 2. What is the first use date for the restaurant’s services?

Text Copyright John L. Welch 2021.