LYONS v. AMER. COLL. OF VET. SPORTS MED. REHAB trademark trial appeal summary

trademark word cloud

Decided: June 8, 2017

This is an appeal from the Trademark Trial and Appeal Board’s cancellation of Appellant Lyon’s registration of the service mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION (“the mark”) on the Supplemental Register on the ground that she does not own the mark.  The Court affirmed the cancellation.

Lyons is an equine veterinarian, who was part of a committee seeking accreditation by Appellee (“AVMA”) of a veterinary specialist organization (“VSO”) for treating athletic animals.  Lyons was later dismissed from the committee. Following Appellant’s departure, both she and AVMA claimed ownership of the mark.

The Court found no error in the legal framework the Board used to evaluate ownership.  The three main factors to be considered in ownership disputes surrounding service marks as between a departing member and the remnant group are:

(1) the parties’ objective intentions or expectations;

(2) who the public associates with the mark; and

(3) to whom the public looks to stand behind the quality of goods or services offered under the mark.  Wonderbread 5 v. Gilles, 115 U.S.P.Q.2d 1296, 1305 (TTAB 2015)).

The Court agreed with the Board that the collective expectation of the parties was that the organizing committee would form an AVMA-accredited VSO with a name that became the mark.  The Court acknowledged that while “some evidence may indicate Lyons’s subjective belief that she owned the mark and would control the VSO once it was formed,” these “secret reservations” were not objectively reflected in her interactions with the other committee members.

The Court noted that the document Lyons cited as her first use of the mark “was written in the future tense, indicating Lyons’s future plans to form a VSO with the name of the mark.”  “[P]reparation and publication of future plans do not constitute use in commerce.”  “15 U.S.C. § 1127, requires both advertisement and actual use of the mark to satisfy the ‘use in commerce’ requirement.”  The Court also found that Lyons never made expenditures for advertising or marketing and that Lyons has no employees or volunteers, has no students enrolled in educational courses offered under the mark, and has no certification program.  Contrariwise, AVMO has certified veterinarians, established residency programs in veterinary colleges, and conducted conferences and continuing education programs.  The AVMA published the committee’s VSO petition to its members, and has obtained corporate sponsorships and received media attention.  The Court agreed with the Board’s finding that “the relevant public looks to the College [AVMA], not Lyons, for services in connection with the mark because Lyons’s use of the mark has not created distinctiveness inuring to Lyons.”

The Court noted that “substantial evidence supports the Board’s finding that members of the public who seek out veterinary sports medicine and rehabilitation services will rely upon the College’s certification as evidence of a particular veterinarian’s expertise,” and therefore the public looks to the AVMA to stand behind the quality of the services.  The AVMA website allows users to contact the College and to search for specialists.  “[T]he College’s very name carries the ‘AVMA’s seal of approval’ because many AVMA-accredited VSOs, and none that are not AVMA-accredited, have names beginning with the words “American College of Veterinary.”  Lyons produced no evidence that she has obtained similar certifications from the AVMA, that she has students enrolled in educational services offered under the mark, or that she offers any certification programs at all.

The Court concluded that while Lyons may have been the first to use the mark, her use never rose to the level of use in commerce.  “[H]er involvement with the committee may have been the very reason that the committee adopted the mark; nevertheless, it is clear from the record that the College used the mark in commerce before Lyons, and Lyons cannot in effect appropriate it.”

Read more:  Federal Bar member attorneys may access the full case summary by Barnwell Whaley attorney Bill Killough in the July 2017 issue of Federal Circuit Case Digest.

Additionally, you may read the full opinion here.

Trademark word cloud image by Thinkstock.

thumbnail headshot image of patent attorney BC KilloughB.C. “Bill” Killough is a registered patent attorney with Barnwell Whaley law firm with offices in Charleston, SC and Wilmington, NC. On behalf of his clients, Bill has obtained more than 275 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.