ULTRA SUN Offer for Sale Not Enough for Use in Commerce

With the exception of registrations issued pursuant to international conventions, a federal trademark registration will not issue until a proper statement of use in commerce is filed with the USPTO.

“Trademark rights arise from the use of a mark in commerce.” Bertini v. Apple Inc., ___ F.4th ___, 2023 USPQ2d 407, at *2 (Fed. Cir. Apr. 4, 2023). “The federal registration of a trademark does not create an exclusive property right in the mark. The owner of the mark already has the property right established by prior use. … However, … trademark owners who register their marks with the [US]PTO are afforded additional protection[s] not provided by the common law.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999) (discussing the rights afforded by federal registration).

Bona Fide Use in Commerce

Use in commerce for goods under Section 45 of the Trademark Act means:

[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. … [A] mark shall be deemed to be in use in commerce …on goods when — (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce[.]

Thus, one must sell or transport goods bearing the mark in order to obtain a U.S. trademark registration. See, e.g., Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pac. Beverages, 125 USPQ2d 1043, 1052-55 (TTAB 2017) (neither importation of vodka from a foreign supplier to the respondent, nor the respondent’s distribution of complimentary vodka samples in the nature of preliminary advisory consultations rather than bona fide sales in the ordinary course of trade, qualified as sufficient use in commerce to support registration); Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013) (holding that the depiction of the applicant’s mark on his website, unaccompanied by any actual sale or transport of the goods in commerce before his application filing date, constituted mere advertising of his goods, and was not bona fide use of the mark as of the application filing date); Automedx, Inc. v. Artivent Corp., 95 USPQ2d 1976, 1982 (TTAB 2010) (finding that ventilator sales bearing its mark to the military were for legitimate business reasons (i.e., to test and refine the portable ventilators) and not merely to reserve the right to register its marks).

Offer for Sale of a Single Tube of ULTRA SUN Not Enough

In a cancellation proceeding, the Trademark Trial and Appeal Board (“TTAB”) cancelled the ULTRA SUN trademark registration because the registrant (the Respondent in the cancellation) had not sold or transported its ULTRA SUN sunscreen in commerce prior to the deadline of October 6, 2018 (the “Critical Date”) for filing the statement of use. Ultrasun AG v. Sun Precautions, Inc., Cancellation No. 92072352 (TTAB Apr. 18, 2023). Indeed, “none of its first order of ULTRA SUN sunscreen was ready to be shipped to it, nor had it been so shipped by that time.”

            As of a few days before the October 6, 2018 Critical Date, October 3 and 4, 2018, Respondent had only one tube of ULTRA SUN sunscreen (the “Single Tube”) in its possession, which Respondent had received from the supplier on October 1, 2018. The only product Respondent had in its possession as of the Critical Date was that same Single Tube of sunscreen [which was referred to as a “prototype”].

            On October 3, 2018, a picture of the Single Tube bearing the mark was uploaded to Respondent’s website, and that same tube was displayed for sale at Respondent’s Seattle store the next day (October 4, 2018). There is no evidence that the Single Tube was sold on or before the Critical Date of October 6, 2018.

The TTAB held that neither displaying one tube of ULTRA SUN sunscreen for sale on its website, nor offering that same tube for sale at its retail store, constituted a sale or transport of the identified goods bearing the mark in commerce as of the Critical Date.

As for the prior shipment of the Single Tube from its supplier, “a shipment of goods from the manufacturer to the trademark owner … [does] not satisfy the use or transportation in commerce requirement [for the mark to have been used in commerce], as … [this constitutes] a [mere] shipment of the goods in preparation for offering the goods for sale.” Tao Licensing, 125 USPQ2d at 1052 (citing Avakoff v. Southern Pac. Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985)).

Accordingly, the TTAB granted the petition to cancel the ULTRA SUN registration for lack of use in commerce as of the deadline for filing the requisite statement of use under Section 1(d).

 

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.