Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering Of The Services, Not Just Preparation

• Published date: 14 December 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

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...