TTAB Affirms Non-Use Refusal Where Applicant Merely Prepared to Provide Services

Trademark rights in the United States are established through use. As such, trademark applicants are not permitted to register a trademark with the United States Patent and Trademark Office to simply reserve rights in a mark that the applicant intends to use at some indeterminate future date. The Trademark Trial and Appeal Board (“TTAB”) reminded applicants of that requirement in In re Alessandra Suuberg, 2021 USPQ2d 1209 (TTAB 2021) when it affirmed a non-use refusal under Trademark Act Section 1(a).

Suuberg applied to register the mark HAVE SOME DECENCY under Section 1(a) of the Trademark Act for use with various charitable fundraising services. Registration was initially refused for failing to function as a trademark under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127, because the mark was found to be a commonplace expression used by a variety of sources. However, during the course of prosecution, the mark was also refused under Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a) and 1127, on the grounds that Suuberg had not used the mark in commerce as of the filing date of the application.

By applying under Trademark Act Section 1(a), Suuberg averred that the mark was in use with all of the services in the application as of the filing date. To show use of the mark with charitable fundraising services, Suuberg submitted a specimen consisting of a website screenshot showing the mark on the webpage along with a “Donate” button. The Examining Attorney visited Suuberg’s website and made of record numerous screenshots that called into question whether the mark was currently in use with the applied-for services.

The TTAB highlighted several pieces of this website evidence that cast doubt on whether the mark was in use in commerce, notably:

1. A webpage featured placeholder text rather than actual information concerning the services;
2. A “Donate” button that navigated to a different webpage with an error message and no functionality to accept donations;
3. A webpage indicated Suuberg was looking for volunteers to “get our organization off the ground”; and
4. A webpage with the heading “Make a Donation” that included an advisory that Suuberg was not currently accepting donations.

Such evidence indicated that, at the time the application was filed, Suuberg’s website was under development and Suuberg was not offering any services under the applied-for mark. Further, Suuberg’s explanation regarding use of the mark did little to assuage the concern of the TTAB that the mark was not used in commerce as of the filing date.

Specifically, although Suuberg detailed the steps she had taken to create the charitable organization, such as incorporating as a non-profit organization, applying for tax exempt status, and researching laws concerning charitable donations, the TTAB was not persuaded. These activities were preliminary in nature and did not show the mark was in use in commerce prior to Suuberg filing the application.

Similarly, Suuberg’s website was in its formative stages when she filed the trademark application and did not demonstrate use of the mark with any of the services. Although the website included a “Donate” button, Suuberg acknowledged during the proceedings that she was not actually accepting charitable donations at the time the application was filed. Suuberg tried to minimize this fact by arguing that the solicitation of donations was a relatively minor service in the context of the other services offered under the mark. Nevertheless, the TTAB pointed out that during the course of the proceedings, Suuberg never indicated, by statement or through evidence, that she offered any of the applied-for services.

The TTAB also highlighted that Suuberg was advised by the Examining Attorney of her ability to amend the application from Use in Commerce under Section 1(a) to Intent to Use under Section 1(b) if she was unable to show use. Had Suuberg amended to a Section 1(b) application, she would have preserved her application and filing date, as well as the opportunity to secure registration upon an acceptable showing of use. However, because Suuberg did not offer any of the services in the application as of the filing date, the TTAB affirmed the refusal and found the application void ab initio for non-use of the mark with the applied-for services.

The TTAB did not reach a decision on the merits of the failure to function refusal under Trademark Act Sections 1, 2, 3, and 45 because it affirmed the non-use refusal.

The case is In re Alessandra Suuberg, 2021 USPQ2d 1209 (TTAB 2021).