What Constitutes Use In Commerce For A Service Mark?

The Trademark Trial and Appeal Board (TTAB) recently answered this question on January 2, 2014, in the case of Blast Blow Dry Bar LLC v. Blown away LLC d/b/a Blast Blow Dry Bar, Opposition No. 91204769 (January 2, 2014). The applicant is a hair salon located in Minnesota marketing its services under the trademark BLAST BLOW DRY BAR for hair care services. The opposer is located in Texas, and is using the mark BLAST BLOW DRY for hair salon services that include wash and blow-dry services. The Board held that the trademarks were highly similar. The only difference was a diacritic circle and the disclaimed word “bar”. Apparently, the applicant did not conduct its due diligence. It is critical to conduct a clearance search prior to filing a trademark application so that you can avoid encountering similar marks for identical services during your trademark prosecution.

The Board concluded that the services were essentially identical. Therefore, it held that there was a likelihood of confusion between the trademarks. Since the issue of likelihood of confusion was determined, the case turned into a question of priority. To resolve this issue, one party must demonstrate they used the mark in commerce before the other party, thereby entitling that party to register the trademark at the United States Patent & Trademark Office (USPTO). The legal definition of “use is commerce” will be discussed as well as what types of action rise to this level.

To establish priority a party can rely on their trademark registration, trademark filing date, trade name use, trademark or service mark use, use equivalent to service mark or trademark mark use, or demonstrate another use that rises to this level. The opposer pleaded rights based on use and use tantamount to service mark use. For a service mark to be legally used in commerce, it must be used in advertising or in the sale of the services and the services must be rendered. The opposer used its trademark in advertising and specifically on a banner as early as December 5, 2011. The opposer also attended a party as a promotional effort and styled several guests’ hair while distributing marketing brochures. However, the hair styling services were rendered as a courtesy and the opposer was never paid for such services. The TTAB held that this was sufficient for use in commerce under the Trademark Act. See 15 U.S.C. §1127 for the legal definition of commerce.

Payment for services is not necessary to qualify as “use in commerce”. See Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 (TTAB 1996). The intended purpose of the revised definition of “use in commerce” was to allow for flexibility and for a broad application. The legislative intention was to provide for a liberal interpretation of the statute to include commercial use that is common to a specific industry. Even though only four clients received services on the day in question, due to the local nature of the business and low cost of the services, the Board held that this warranted finding commercial use, under the circumstances. The Board held that the opposer established use in commerce as of December 8, 2011.

The applicant was entitled to rely on its trademark application filing date for its first use date, December 10, 2011. An applicant’s filing date is considered the first use date unless it can be shown that earlier use in commerce occurred.  See Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134 (TTAB 2013). (See also our blog post entitled Trademark Applicants Have Another Reason To File For Federal Protection where Central Garden & Pet Co. was the focus of the update).  Both parties tried to assert that its purchases of its domain names could constitute use in commerce. However, the Board found that this was insufficient to qualify as neither website was operational at the time of purchase and services were not being rendered. Applicant also claimed that he formed his limited liability company at a time prior to his trademark filing at the USPTO. But the mere formation of a business entity will not be sufficient to satisfy the Trademark Act’s definition of use in commerce.

There was also discussion by the opposer that the negotiation and execution of his commercial lease may qualify for an earlier use in commerce date. The Board held that the lease execution did not constitute public use of the trademark. Lastly, opposer attempted to establish an earlier first use date by informing the Board that there was distribution of business cards and other marketing material. However, the opposer could not prove how many potential customers were reached by this promotional effort or that it had a significant impact on the public. Therefore, this too failed to rise to the level of  use in commerce.

In summary, The TTAB held that opposer established a first use date on December 8, 2011, while the applicant had to rely on his trademark application filing date of December 10, 2011.  Therefore, the TTAB sustained the opposition and refused to register the applicant’s trademark. The common law rights of the opposer prevailed. If you have any questions, regarding whether your trademark use will satisfy the legal definition of use in commerce, please feel free to contact our Office in Westchester County, New York. One of our New York trademark lawyers will be happy to assist you.