Does using a trademark in contracts that consumers don’t see count as use? AT&T v. DORMITUS

Does using a trademark in contracts that consumers don’t see count as use? AT&T v. DORMITUS

A trademark is something that a product seller uses to identify the products it sells.  A word, phrase or symbol is what most people commonly think of as a trademark, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection.  Obtaining a right to a trademark law in the United States is based on using the trademark in commerce.  The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark.  A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.

Trademark law is not intended to allow a trademark owner to accumulate a collection of trademarks that go unused.  To be granted trademark registration in the United States, evidence of the trademark being used in commerce must be presented at some stage of the trademark registration process.  To maintain a registered trademark in the United States a trademark owner must file maintenance documents which demonstrate the trademark continues to be used in commerce.  If a trademark owner stops using a trademark in commerce, then the trademark owner will eventually loose their claim to the trademark.

According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements: 1) nonuse; and 2) intent not to resume use.  The tricky thing about abandonment of a registered trademark is that failure to renew registration does not prove that a trademark was abandoned.  Because use in commerce is the key to trademark rights in the United States, a trademark owner can continue to claim a right to a trademark even after the trademark registration is canceled.  The question then becomes, can the owner of a canceled registered trademark oppose the registration of a similar trademark?

AT&T MOBILITY LLC v. MARK THOMANN and DORMIUS BRANDS LLC, Opposition No. 91218108 (TTAB 2020) is a case which deals with this question.  The plaintiff in this case was initially formed in 2000 under the name Cingular Wireless LLC and became one of the largest wireless telecommunications companies in the country.  In 2004 the plaintiff bought AT&T wireless.  In 2007 the plaintiff legally changed its name from Cingular Wireless LLC to its current name of AT&T Mobility LLC and did not renew its trademark registrations for CINGULAR.  Despite not using CINGULAR as a consumer facing trademark,  the plaintiff has a subsidiary company named New Cingular that holds FCC licenses to operate cellular networks, holds leases for hundreds of antenna installations and performs many other business functions.

The defendant in this case is a trademark applicant that seeks registration on the Principal Register of the standard character mark “CINGULAR”.  The plaintiff opposed the registration of the trademark on the grounds that registration was likely to cause consumer confusion and that the the defendant was trying to siphon consumer good will away from the plaintiff.

The defendant argued that allowing registration was not likely to cause consumer confusion and that the plaintiff lacks standing to oppose the registration.  The defendant contended that “New Cingular” is only used in dense legal contracts and FCC tower leases and license and that its “public-facing” business with wireless retail customers is conducted only under the assumed name AT&T Mobility.  Because Cingular was not being used to brand consumer products, the defendant argued the plaintiff could not oppose the registration.

The Trademark Trial and Appeal Board broke the case into two parts, first standing which was decided in February 2020.    The plaintiff and defendant both operate in the field of wireless communications, the relevant public is not merely retail consumers but also other businesses.  The TTAB held that New Cingular uses the term CINGULAR in its trade name and conducts business in the field of wireless communications, therefore the plaintiff’s standing is confirmed by its corporate relationship to New Cingular.

Now that the TTAB has determined that the plaintiff has standing to oppose the registration, the case will continue to the substantive matter of whether registration of the CINGULAR trademark should be granted.

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