This was first posted on May 7, 2009.
The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.
I have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?
As John Welch explains, “The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007)…, found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players.” In other words, Bose was found to have committed “fraud” because the list contains the tape recorders and players, but by the time Bose renewed its mark in 2001 it should not have continued to seek trademark registration for a product it no longer sells.
Bose acknowledged that it stopped manufacturing and selling audio tape recorders and players in 1996-97. Nonetheless, it did not delete those goods from the WAVE registration when filing for renewal. Bose contended that the renewal was proper “because owners of audio tape recorders and players continue to send their previously purchased goods to opposer for repair services and upon completion of the repair services opposer ‘transports’ them back to the owner.
This is a great argument, but evidently the TTAB didn’t buy it because there was no case law to support it, according to John. As he says in a 2008 article:
The Board noted that Bose offered no case support for its theory that “transporting” a product back to its owner after repair constitutes use of a trademark on the product as contemplated by Section 45 of the Trademark Act. It acknowledged that a sale of goods is not necessary to establish trademark use; shipment of samples and prototypes may suffice, but the entity causing the shipment must be the owner of the goods at the time of transportation. Here, “the scenario presented by opposer does not constitute use sufficient to maintain a registration for goods.” The question then became “whether it was reasonable for opposer to believe that it did.” The Board found that it was not, because Bose “could not point to case law that supports” its interpretation of the statute.
I don’t have the appellate briefs, though I suppose an argument not made before the TTAB cannot be the basis of an appeal before the CAFC. But I wouldn’t have argued that “shipment” of merchandise is the trademark use that justifies continued registration. I would have argued that where, as here, (1) the trademark is still is very much in use by the company that manufactured the tape recorders and players not so long ago, and (2) consumers still have those machines and, indeed, are shipping them to Bose for repair, the trademark “use” was not the shipping but the repairing itself. The maintenance of the item by Bose to the level of quality deemed appropriate by Bose is certainly trademark use. Read More…