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Trademark Board's Precedential Ruling on Use in Commerce
In a nearly 50-page precedential opinion, a Trademark Trial and Appeal Board (TTAB) panel of judges recently underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become. In ruling also of great significance to the entertainment industry, the TTAB panel ordered cancellation of a registration for TAO VODKA for alcoholic beverages, excluding beer, because the registrant had not used the trademark in commerce as of the filing of its declaration of use, and the trademark was likely to cause confusion with the registered mark TAO for restaurants and nightclubs, which the TTAB held is famous. Tao Licensing LLC v. Bender Consulting d/b/a Asia Pacific Beverages, 92057132 (TTAB 2017).
In reaching this decision, the TTAB distinguished a series of recent rulings from the U.S. Court of Appeal for the Federal Circuit that apparently curtailed the need for significant evidence of use in commerce in board proceedings. In a 2016 ruling, the Federal Circuit had explained that even evidence of just one sale of two hats from a church gift shop could qualify as use in commerce under the Lanham Act, where the in-store purchaser was apparently from out of state, although there was no evidence that the hats had ever left Illinois, where the store was located. See, Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986 (Fed. Cir. 2016).
Additionally, in a pair of separate rulings in 2015, the Federal Circuit held that Internet printouts and registrations of third-party marks alone — without any additional evidence of how the marks are actually used by those parties or the extent of such use — can be powerful evidence of a mark's weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports S.L.U., 797 F.3d 1363 (Fed. Cir. 2015); Juice Generation Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015).
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