New York Trademark Attorney Blog
In a precedential decision, the TTAB affirmed a decision of the Director of the USPTO which canceled a trademark registration based on the applicant failing to prove it used its mark in commerce as of the Statement of Use deadline. The applicant applied for the mark EVERWISE CREDIT UNION for a variety of credit union, banking and financial services. See Reexamination No. 2023-100533R for Registration No. 7068783 2026 USPQ2d 356 (TTAB 2026) [precedential]. The applicant submitted a specimen, the specimen was accepted and the registration issued. Soon thereafter, a third party petitioned for reexamination . See the firm’s webpage entitled, New USPTO Proceedings: Expungement & Reexamination, to learn more about these ex parte proceedings created by the Trademark Modernization Act of 2020.
In an expungement proceeding, it must be demonstrated that a mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. In a reexamination proceeding, it must be shown that a mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date for use (the application filing date or the deadline for the Statement of Use.). Reexamination proceedings are only applicable to applications based on use in commerce. If the Director institutes a proceeding, it is set forth in an Office Action.
Here the Director instituted the proceeding and this required the registrant to provide evidence of use, information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue as of the relevant date. As an alternative to introducing evidence to rebut the prima facie case of nonuse, the registrant may delete the goods or services at issue in the proceeding. This will render the proceeding moot as to those goods or services.
The third party’s Petition for reexamination included evidence of the Wayback Machine, an Internet archive, as of the deadline for the Statement of Use. Additional evidence included contentions that the Apple Store and Google Play Store were searched for an app branded under EVERWISE CREDIT UNION and no app was found except for a mobile application branded TCU Mobile Application. Petitioner also stated that it conducted a search of the USPTO database and found no evidence of use of the mark in connection with the services listed in international class 036, essentially implying that the specimen was not a proper demonstration of use in commerce. Based on the investigation, the Petitioner argued there was a prima facie case made that there was no use in commerce with the services identified in the registration by the deadline date for the Statement of Use. The Director agreed and issued a non-final office action wherein the registrant could rebut the prima facie showing.
The Examiner argued that the registrant was using TCU and TEACHERS CREDIT UNION as the source of the services prominently and throughout the materials while EVERWISE CREDIT UNION was merely token use, used in an inconspicuous manner buried in the text. See, e.g., In re Osterberg, No. 78331176, 2007 WL 616032, at *3 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). The USPTO contended that registrant’s blog post of June 26, 2023, announced it would be rebranding the credit union from TEACHERS CREDIT UNION to EVERWISE CREDIT UNION as of June 26, 2023, well after the Statement of Use deadline date. This announcement was more consistent with registrant’s earlier uses of TCU and TEACHERS CREDIT UNION as shown in the specimen submitted with the Statement of Use.
Finally, when registrant’s new website launched after the Statement of Use deadline, it did prominently feature EVERWISE CREDIT UNION at the top of the webpage set apart from the other wording on the page and was used multiple other times with the registered services. There was also evidence of an online article from Inside Indiana Business, stating the registrant’s new branding to EVERWISE CREDIT UNION would launch on June 23, 2023. The registrant attempted to argue that because the Examining Attorney accepted the specimen that this should be sufficient evidence of use in commerce. However, it is critical to keep in mind that the acceptance by the Examining Attorney does not control the issue of use in commerce. The Director nor the TTAB are bound by prior decisions of Examining Attorneys, see TMEP 1716.04(c). The Board concluded that the change of name was executed on June 26, 2023, after the SOU Deadline (April 14, 2023), and therefore cancelled the trademark registration for EVERWISE CREDIT UNION. This decision provides guidance for practitioners that when in doubt, either request an extension to file the Statement of Use, and if no extensions are remaining, file a new application before the deadline of the last date to file the Statement of Use. If you have questions regarding proper use of your trademark in commerce, please feel free to contact the firm for a courtesy consultation.