United States Postal Service v. ePostal Services, Inc., Cancellation 92060891

• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Decision Date: 07 September 2018
• Docket Number: Cancellation 92060891
• Parties: United States Postal Service v. ePostal Services, Inc.

United States Postal Service v. ePostal Services, Inc.

Cancellation No. 92060891

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 7, 2018

THIS ORDER IS NOT A PRECEDENT OF THE TTAB

Before Bergsman, Kuczma and Goodman, Administrative Trademark Judges.

By the Board:

The United States Postal Service ("Petitioner") seeks to cancel the trademark registration owned by ePostal Services, Inc. ("Respondent") for the standard character mark THE INTERNET POST OFFICE - FOR PREMIUM VALUE EMAIL SERVICES for "telecommunication services, namely fee-based email forwarding services via the internet," issued on the Supplemental Register.^[1] In its amended petition for cancellation (14 TTABVUE 5-7), Petitioner alleges four grounds for cancellation, namely, false suggestion of a connection, likelihood of confusion with Petitioner's prior registered marks, deceptive misdescriptiveness, and that "the term for which registration has been obtained has not been used as a trademark or service mark" (14 TTABVUE 7). In support of its claims, Petitioner pleads common law rights in "POST OFFICE," as well as ownership of ten registered marks containing the wording "UNITED STATES POST OFFICE" or "POST OFFICE" for various goods and services.^[2] Petitioner attached to its amended pleading printouts regarding those registrations from the Trademark Electronic Search System (TESS) (14 TTABVUE 11-27), thereby making them part of the record pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R § 2.122(d)(1). In its amended answer (25 TTABVUE) Respondent denies the salient allegations in the amended petition for cancellation and asserts the affirmative defenses of laches, acquiescence, waiver, and equitable estoppel.^[3]

This case now comes up for consideration of Respondent's motion (filed October 16, 2017) for partial summary judgment on Petitioner's false suggestion of a connection likelihood of confusion, and deceptive misdescriptiveness claims and on two of Respondent's affirmative defenses namely, laches and equitable estoppel; and Petitioner's motion (also filed October 16, 2017) for summary judgment on all four of its claims, i.e., the foregoing three claims plus "the term for which registration has been obtained has not been used as a trademark or service mark," and on Applicant's four affirmative defenses, namely, laches, acquiescence, waiver, and equitable estoppel. The motions are fully briefed.

I. PRELIMINARY MATTERS:

A decision on a motion for summary judgment necessarily requires a review of the operative pleadings to determine the legal sufficiency of the claims. See Fed. R. Civ. P. 56(a); see, e.g., Asian and W. Classics B.V. v. Lynne Selkow, 92 U.S.P.Q.2d 1478, 1480 (TTAB 2009). In that regard, we review the requirements for registering a mark on the Supplemental Register and the grounds for cancelling such a mark to determine whether Petitioner has set forth a valid basis for cancelling Respondent's registration.

A mark is entitled to registration on the Supplemental Register if it is not registrable on the Principal Register, so long as it is capable of distinguishing the applicant's goods or services; it is not otherwise prohibited under subsections 2(a), (b), (c), (d) and (e)(3) of Section 2 of the Trademark Act, 15 U.S.C. §§ 1052(a), (b), (c), (d) and (e)(3);^[4] and the designation is in lawful use in commerce by the owner thereof on or in connection with any goods or services. Section 23 of the Trademark Act, 15 U.S.C. § 1091.

Section 24 of the Trademark Act, 15 U.S.C. § 1092, sets forth two grounds for cancellation of a registration on the Supplemental Register, namely, that the registrant is not entitled to registration, or that the mark has been abandoned.^[5]

A. PETITIONER'S CLAIM THAT THE MARK IS DECEPTIVELY MISDESCRIPTIVE

Petitioner alleges in the amended petition to cancel that Respondent's mark is deceptively misdescriptive of Respondent's services (¶¶ 23, 25-26; 14 TTABVUE 6-7). While a deceptively misdescriptive mark is unregistrable under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the Principal Register, it may be registered on the Supplemental Register. See Section 23 of the Trademark Act, 15 U.S.C. § 1091; Trademark Manual of Examining Procedure (TMEP) § 1209.04 (Oct. 2017). Accordingly, Petitioner's deceptively misdescriptive claim is not a viable claim, will not be considered, and is hereby stricken.^[6] See Fed. R. Civ. P. 12(f); Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a). In view thereof, the parties' respective motions for summary judgment are moot as to this ground.

B. PETITIONER'S CLAIM THAT THE MARK IS NOT USED AS A SERVICE MARK

Petitioner alleges in its amended petition that Respondent's mark is buried within other text on a subpage of Respondent's website, and that "on information and belief, Respondent is not using the Mark as a trademark or service mark" (¶ 31; 14 TTABVUE 7). However, as discussed in further detail infra, Petitioner argues in its motion for summary judgment that the involved mark was never used in commerce in connection with the services recited in the registration and that the involved registration should be cancelled (32 TTABVUE 15-20).

In its October 25, 2016 order, the Board construed Petitioner's ambiguous allegations solely as a failure to function as a mark claim (22 TTABVUE 9). Based on the arguments in Petitioner's motion, and Respondent's response thereto, Petitioner asserts that Respondent is not entitled to maintain its registration because the mark has not been used in commerce. See City Nat'l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 U.S.P.Q.2d 1668, 1674-75 (TTAB 2013) ("the underlying basis for both of petitioner's claims in this proceeding is that any use by respondent of the term TREASURYNET has thus far been solely for respondent's internal use, not for use by others, and thus the term was never used in commerce in connection with the services recited in the registration …"). In view of the arguments asserted by Petitioner in its motion, e.g., that "there is no evidence that [the identified services] are accessible or used by anyone other than Respondent" (32 TTABVUE 18), we construe Petitioner's allegations that Respondent is "not using the Mark as a … service mark" (14 TTABVUE 7) as a claim under Trademark Act Section 24, 15 U.S.C. § 1092, viz., that Respondent's registered mark is not entitled to registration on the ground that the mark was never used in commerce in connection with the services recited in the registration. See id.

C. RESPONDENT'S EQUITABLE DEFENSES; APPLICABILITY TO NON-USE IN COMMERCE CLAIM

We also consider whether any of Respondent's pleaded equitable defenses are viable against Petitioner's claim that Respondent's mark is not used in commerce.

In all inter partes proceedings, equitable principles of laches, estoppel, and acquiescence, where applicable, may be considered and applied. Section 19 of the Trademark Act, 15 U.S.C. § 1069. The equitable defenses of laches, estoppel or acquiescence, and waiver are not available to a defendant against claims of abandonment. See, e.g., Linville v. Rivard, 41 U.S.P.Q.2d 1731, 1733 n.5 (TTAB 1997), aff'd on other grounds, 133 F.3d 1446, 45 U.S.P.Q. 1374 (Fed. Cir. 1998); TBC Corp. v. Grand Prix Ltd., 12 U.S.P.Q.2d 1311 (TTAB 1989). For the same reason that equitable defenses will not defeat a claim of abandonment (as discussed infra, see, e.g., Saint-Gobain Abrasives, Inc. v. Unova Indus. Automation Sys., Inc., 66 U.S.P.Q.2d 1355, 1359 (TTAB 2003); Linville, 41 U.S.P.Q.2d at 1733 n.5), we find that these equitable defenses will not bar a non-use claim or a claim that a mark is not used in commerce.

"Abandonment" occurs when, inter alia, use of a mark has been discontinued with intent not to resume use. Trademark Act Section 45, 15 U.S.C. § 1127. "Use" of a mark for purposes of abandonment "means the bona fide use of a mark made in the ordinary course of trade." Id. If a registered mark is no longer used, it is subject to cancellation under Trademark Act Section 14, 15 U.S.C. § 1064(3). The rationale for this oft-stated equitable principle is that it is within the public interest to have marks stricken from the register that are no longer in use, and that this interest or concern cannot be waived by the inaction of any single person or concern no matter how long the delay persists. See W. D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 U.S.P.Q. 313, 316 (TTAB 1965), aff'd, 377 F.2d 1001, 153 U.S.P.Q. 749 (CCPA 1967); see also Saint-Gobain Abrasives, 66 U.S.P.Q.2d at 1359 (holding that the public interest favors cancelling registrations that are void ab initio, and the defenses of laches and acquiescence therefore are unavailable against a functionality claim).

Turning to non-use claims or a claim that a mark is not used in commerce, as discussed, "use in commerce" means "the bona fide use of such mark made in the ordinary course of trade." Trademark Act Section 45, 15 U.S.C § 1127. With respect to services in particular, a mark is "used in commerce" "when both [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce." Id; see also Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120 U.S.P.Q.2d 1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in commerce requirement). When a service mark has not been "used in commerce" on the day the application or statement of use is filed, the registration of that mark is void ab initio. Couture v. Playdom, 778 F.3d 1379, 113 U.S.P.Q.2d 2042, 2043-44 (Fed. Cir. 2015) (merely offering a service, without actually providing it, does not constitute use in commerce) (internal citation omitted). When a...