Hey, look, there have been developments in everybody’s favourite trademark dispute.
Deb Stoller has filed a motion to amend her petition to cancel SFSE’s trademark to add new grounds.
The parties have been going forward with discovery–interrogating each other’s representatives in order to discover what relevant evidence exists. And based on those revelations, Stoller wants to amend her petition to add further grounds for cancelling the STITCH & BITCH CAFE mark.
If you check out the above link, start around page 4 of the proposed amended document. In a nutshell, the new allegations are that at time the trademark application for STITCH & BITCH CAFE was filed, the mark was not actually in use in association with the wares and services listed in the application.
Trademark rights, whether registered or not, are predicated on use (with all the legal wrangling such a short word implies) in commerce or trade. If you don’t have a trademark registration but are using some mark to distinguish your goods, services, or business, you may have the common law right to protect yourself from others who are passing their own wares or services as yours — but to get that right, you must be using some trademark or tradename, because you’ll need to prove that you have developed a reputation or goodwill in that mark or name. (If you weren’t using it, how could you have goodwill in it? It follows logically.)
If you want a trademark registration, you may file the application based on an intent to use the mark at a later date; but even if your application passes all the procedural hurdles and substantial examination, it will not be registered unless you provide proof that you have begun to use the mark (it’s called a “specimen” — an example of how you’re actually using your mark as a trademark, on packaging, in ads, and so on). If you file a trademark application for a mark that you’re already using, then you may declare your date of first use, and provide a specimen to show how you’re using the mark.
That all seems fairly innocuous, but mistakes can have serious consequences for a trademark registration. Giving an incorrect date of first use may invalidate a trademark registration. Because trademark registrations are based on assurances that the applicant believes that they’re entitled to the mark (a subjective opinion), and that they’ve been using it at least as early as the date they say they’ve been using it (which should be objective), those dates are important. (Now that I’ve harangued you about first use dates, I’ll refer you back to this.)
In the case of SFSE, the application for the CAFE mark was filed in 2000 based on alleged use since November 1998.
But now, Stoller wants to allege that SFSE was not “providing on-line chat room for the transmission of messages among computer users concerning sewing via a global computer network” under International Class 38 with the CAFE mark.
Registered (and applied-for) marks are classified according to the wares and services for which they’re used. Since more than one entity can use the very same trademark for different products or services, there needs to be an orderly way to categorize trademark registrations to make it easier to determine whether it would be confusing to allow two people to use the same mark. Someone using the trademark KNITZ for fungicides in IC 5 (why not?), business-wise, would probably never collide with someone selling KNITZ beer in IC 32 (why not indeed?), and customers may never mistake the beer as a product of the fungicide company (we hope). The International Classifications are quite broad, though, and they’re not determinative of confusion. It’s conceivable that two people with similar marks could coexist in the same class, and it’s quite possible that similar marks in different classes could be confusing.
Applicants often tailor the description of their goods and services to match the wording in international or national classification manuals, because the wording must be in ordinary commercial terms that other people in the industry would understand, and examiners like to see things that match their classification manuals. Note the usage of “transmission of messages” and “global computer network” in the CAFE mark service description: those are phrases in the manual.
International Class 38 is “telecommunications“. That class covers services involving one-to-one and one-to-many communications using technology. In the amended petition, one new ground is that the services that were provided as of 1998 in association with the CAFE mark–the guestbook on the SFSE site–was not a service in IC 38, because SFSE did not actually provide telecommunications service, just the guestbook. In other words, to provide a service in IC 38, SFSE had to act as some kind of Internet service provider to provide access means to their site.
On a related point, another ground is that the “chat room” that SFSE purported to provide wasn’t a chat room at all, because it was incapable of providing real-time messaging. I think a number of us noted the guestbook nature of the SFSE forum some time ago–in fact, I think that occasionally a poster would ask (in the guestbook) if there was a way to easily find a conversation thread or previous guestbook entry.
The amended petition also presents grounds for expunging the CAFE registration in respect of the remaining services, “sewing instruction and manuals distributed in connection therewith”. In the original petition, this part of the trademark had not been attacked at all. Evidently the discovery turned up some new information: that if there had been use of the CAFE mark in association with sewing instruction in 1998 (which is disputed), it was not in interstate commerce. (Trademark registrations are governed by Federal law.) And whatever use SFSE had made of the mark for sewing instruction, it had abandoned that use for long enough that the registration for those services should be expunged.
There are also a couple of allegations of fraud on the Trademarks Office, based on the fact that SFSE knew that it wasn’t actually using the mark as declared in the application. Fraud allegations are not unusual in IP proceedings, but an actual finding of fraud by a court or administrative tribunal is not so usual.
In the end, even if the trademark registration is cancelled, it doesn’t mean that SFSE will have lost its rights to use its trademark. It simply wouldn’t be registered, which would make it harder to enforce against others. But would that factor sway ISPs?
(Thanks, Yvonne, for the TTAB alert!)