American University (“Petitioner”), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the “Board” or “TTAB”) to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and priority, and nonuse, and counterclaims were asserted by American University of Kuwait (“Respondent”). The Petitioner owns several trademark registrations, including formatives of the mark American University where acquired distinctiveness is claimed.
These registrations were pleaded in the cancellation petition, including American University (standard characters) and AU (standard characters and a stylized mark) for educational services, namely courses of instruction on the college and graduate level. The Board did not decide the likelihood of confusion issue since it determined that the Respondent failed to use its mark “in commerce” prior to its application filing date. Thus, the TTAB determined that the mark AUK American University Of Kuwait & Design was void ab initio. See American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential].
This was a very lengthy decision by the Board. This blog will discuss only some of the many legal issues addressed in the Board’s decision. Regarding nonuse, if a use based application matures to a registration, it can still be challenged for nonuse. If an applicant files a use based application and fails to use the mark “in commerce” before the filing date of the application with any of the alleged services in a particular international classification, the entire class of goods will be held void ab initio. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009). See also, our blog posts entitled, Proving Nonuse Of A Trademark Prior To The Application Filing and Trademarks Can Be Cancelled For Nonuse, for more on this topic. If the mark is a service mark then, “use in commerce” must include: (1) use of the mark in the sale or advertising of the services; and (2) rendering of the services in a manner that it impacts interstate commerce, rendering the services in more than one state in the U.S. or in the U.S. and in a foreign country.
The Respondent strongly proclaimed that the two-prong test was satisfied, but did not submit documents that corroborated its statements to support its claim. Unsupported statements from a declarant carry little weight. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376-1377 (Fed. Cir. 1998). Most of the advertising failed to demonstrate use of the mark at all, and certain advertisements used variations of the mark, but did not show use of the actual mark in the subject registration. Although it is true that oral testimony of one witness may be sufficient to prove the first use of a party’s mark, this testimony must be based on personal knowledge, which is “clear and convincing”. Nat’l Blank Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 827, 828 (TTAB 1993). This was not the case here.
Use and advertising of a trademark in a foreign country does not create priority rights in the U.S. for that mark against a third party who adopted a similar mark for similar goods or services in the U.S. Respondent did not meet the first prong of the “use in commerce” test. Regarding the second prong, the Respondent failed as well. It argued that its educational services although provided in a foreign country were rendered to U.S. citizens that travelled to its country, and this activity should qualify as “use in commerce”. The Board did not agree with this argument. The Respondent urged the Board to follow a Fourth Circuit case, but the Board declined to do so. The U.S. Court of Appeals for the Federal Circuit binds the Board, and there was no Federal Circuit case law to support the Respondent’s argument. The services must be rendered in the U.S. and a foreign country. Here, Respondent’s educational services were not rendered in the U.S. It is well settled under the Federal Circuit and under Board cases that services only rendered outside the U.S. do not create proprietary rights in marks in the U.S.
The Respondent’s counterclaims for failure to acquire distinctiveness and for partial cancellation on generic grounds were denied, and the petition to cancel was granted. Petitioner, American University earned this win, the University has spent twelve years pursuing this matter. The case underscores how important it is to counsel clients on the legal definition of “use in commerce” and to take the time to have detailed discussions with clients regarding the particulars of “use in commerce”. To properly instruct a client as to whether its particular use satisfies the rules and regulations under U.S. trademark law, counsel must make multiple inquiries with clients and review specimens of use. If you have questions regarding use in commerce, please contact the firm for a courtesy consultation.