IP Law Daily TTAB properly cancelled individual’s registration for mark owned by veterinary specialty organization
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Thursday, June 8, 2017

TTAB properly cancelled individual’s registration for mark owned by veterinary specialty organization

By Cheryl Beise, J.D.

The Trademark Trial and Appeal Board did not err in cancelling a Supplemental Registration for the service mark "The American College of Veterinary Sports Medicine and Rehabilitation" on the ground that the mark was actually owned by a veterinary certification and educational organization rather than by the registrant, veterinarian Sheila Lyons, the U.S. Court of Appeals for the Federal Circuit has ruled. Substantial evidence supported the Board’s finding that the organization was the first to use the mark in commerce and that the relevant public associated the mark with the organization (Lyons v. American College of Veterinary Sports Medicine and Rehabilitation, June 8, 2017, Lourie, A.).

Lyons, an equine veterinarian, was one of five veterinarians who were members of an organizing committee to create a veterinary specialist organization (VSO) in the field of sports medicine and rehabilitation to be recognized by the American Veterinary Medical Association (AVMA). Between 1999 and 2002, the committee began using "The American College of Veterinary Sports Medicine and Rehabilitation" as the name of the VSO. In 2010, the AVMA granted provisional recognition to the "American College of Veterinary Sports Medicine and Rehabilitation" ("the College").

Lyons was dismissed from the VSO’s organizing committee in 2004. Lyons applied to register "The American College of Veterinary Sports Medicine and Rehabilitation" on the Principal Register, but the application was rejected on the ground of mere descriptiveness. However, Lyons obtained Supplemental Registration for the mark in 2006. In 2011, Lyons again sought registration on the Principal Register, based on her claim of substantially exclusive and continuous use for five years. The College opposed the registration and the PTO stayed the proceeding pending resolution of a trademark infringement action Lyons filed against the College.

In 2014, the court ruled in favor of the College, finding that "The American College of Veterinary Sports Medicine and Rehabilitation" was merely descriptive and that Lyons failed to show acquired distinctiveness. The court directed the USPTO to refuse Lyons’s application for registration on the Principal Register, but did not rule upon the Supplemental Register Registration. On March 17, 2016, TTAB granted the College’s petition to cancel Lyons’s Supplemental Registration on the ground that Lyons’s application was void ab initio because she never owned the mark. The Board found that the College was the true owner of the mark as the first to use the mark in commerce. Lyons appealed.

On appeal, Lyons argued that the Board erred in finding that she did not own the mark at the time she filed her application because the evidence showed that she, not the College, was the first to use the mark in commerce. Lyons contended that she first used the mark in 2015 and then has continuously used the mark since 1996 in connection with her business.

The court agreed with the College and the Board that the College, rather than Lyons, owned "The American College of Veterinary Sports Medicine and Rehabilitation" mark. The court found no error in the legal framework the Board used to determine ownership. The Board examined three factors: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark.

Objective intent. The court first found that substantial evidence supported the Board’s finding that the collective expectation of the parties, as objectively manifested, was that Lyons and the rest of the organizing committee would form an AVMA-accredited VSO named The American College of Veterinary Sports Medicine and Rehabilitation. While on the VSO organizing committee, Lyons never claimed ownership of prior use of the mark. Moreover, Lyons admitted that she expected that the VSO would be named The American College of Veterinary Sports Medicine and Rehabilitation.

Public association. Lyons contended that she used the mark as early as 1995 in the fundraising document entitled "The Equine Excellence Initiative," which was "widely disseminated to the veterinary community, sport-horse industry, philanthropic organizations and the public." The court, however, rejected this document as proof of use in commerce because it was written in the future tense, indicating Lyons’s future plans to form a VSO with the name of the mark. The record also showed that Lyons never engaged in advertising or marketing expenditures for the mark and, prior to 2003, never maintained a website for herself or her wholly-owned nonprofit organization, Homecoming Farms. Lyons also had no employees or volunteers, no students enrolled in educational courses offered under the mark, and no certification program.

In order to meet the use requirement for a service mark, the court explained that "an applicant must use the mark in advertising or sale of a service," and show that the service "was actually rendered in interstate commerce." The record in this case did not show that Lyons had met either requirement.

The College, on the other hand, provided extensive evidence of its use of the mark in connection with its education and certification programs. The College maintains an active website, and has certified at least 115 veterinarians, established 13 active residency programs in veterinary colleges, and conducted conferences and continuing education programs in collaboration with other AMVA-accredited VSOs. Therefore, substantial evidence supported the Board’s finding that the relevant public looks to the College, not Lyons, for services in connection with the mark.

Qualify of goods and services. Lastly, substantial evidence supported the Board’s determination that the relevant public looks to the College to stand behind the quality of the educational and certification services associated with the mark. Because the College has earned AVMA accreditation, the veterinarians it certifies may hold themselves out as AVMA-approved specialists.

"While Lyons may have been the first to use the mark, the record shows that her use never rose to the level of use in commerce," the court said. Instead, the “lion’s share of the evidence" supported the Board’s decision that "the College used the mark in commerce before Lyons, and Lyons cannot in effect appropriate it." The Board’s decision was affirmed.

The case is No. 2016-2055.

Attorneys: Stephen J. Lyons (Klieman & Lyons) for Sheila Lyons, DVM. David A. Kluft (Foley Hoag, LLP) for The American College of Veterinary Sports Medicine and Rehabilitation.

Companies: The American College of Veterinary Sports Medicine and Rehabilitation

MainStory: TopStory Trademark FedCirNews

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