The Federal Circuit in Lyons v. American College of Veterinarian Sports Medicine, 859 F. 3d 1023 (Fed. Cir. 2017) addressed trademark ownership, distinguishing between an idea, concept, mere preparation to use and actual use. Between 1999 and 2001 Sheila Lyons and other veterinarians formed an organizing committee and began using the mark “The American College of Veterinary Sports Medicine and Rehabilitation” as the name of its veterinary specialist organization. In 2002, Lyons participated in drafting a letter of intent and working with the organization to create a petition to seek accreditation. She drafted by-laws which she presented to the organizing committee. Thereafter, she was dismissed from the organizing committee for reasons not at issue.
After her dismissal, Lyons sought registration of the mark for “veterinary education services.” She obtained the registration on the Supplemental Register of the U.S. Patent and Trademark Office claiming she used it in commerce. Thereafter, the organization was granted provisional recognition as “The American College of Veterinary Sports Medicine & Rehabilitation” as a Colorado non-profit organization.
The College petitioned to cancel Lyons’ registration on the grounds of priority of use and likelihood of confusion. The Trademark Trial and Appeal Board (“TTAB”) concluded Lyons did not own the mark and that the application for registration was void ab initio. The Federal Circuit affirmed the decision of the TTAB stating that “the lion’s share of the evidence supports the Board’s decision”. It noted that ownership of a mark is predicated on priority of use in commerce. The Court noted that to meet the use requirement for a service mark, an applicant must use the mark in advertising or sale of a service and show that the service was rendered in interstate commerce. In considering the evidence, the Court agreed with the TTAB that the objectively manifested intent of the parties was the mark would be used to name the veterinary specialist organization which is what transpired. Additionally, the relevant public associated the mark with the College and not Lyons because the College certified the veterinarians. Finally, the public looked to the College to stand behind the quality of education associated with the mark. The Court found that the mere preparation and publication of future plans did not constitute use. While Lyons initiated efforts to form the organization and her involvement with it may have been the reason the mark was adopted, it was the College that used the mark.