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 See American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential].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.