from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 92053934.
Stephen J. Lyons, Klieman & Lyons, Boston, MA, argued for
A. Kluft, Foley Hoag, LLP, Boston, MA, argued for appellee.
Also represented by Nicole Kinsley.
Lourie, Wallach, and Stoll, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
Lyons, DVM ("Lyons") appeals from a decision of the
U.S. Patent and Trademark Office ("the PTO")
Trademark Trial and Appeal Board ("the Board")
cancelling her registration of the service mark THE AMERICAN
COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION
("the mark") on the Supplemental Register on the
ground that she does not own the mark. See Am. Coll. of
Veterinary Sports Med. & Rehab. v. Lyons, 2016 WL
1380739, at *19 (T.T.A.B. Mar. 17, 2016)
("Decision"). For the reasons that follow,
is an equine veterinarian. In 1999, Lyons met Dr. Robert
Gillette ("Gillette") at a conference where they
discussed the prospect of forming a veterinary specialist
organization ("VSO") for treating athletic animals.
Gillette had published a similar proposal for board
certification in canine medicine the previous year. For a VSO
to become accredited by the American Veterinary Medical
Association ("AVMA"), a group of veterinarians
wishing to create the VSO must form an organizing committee
and submit a letter of intent to the AVMA. Thus, between 1999
and 2002, Lyons, Gillette, and four other veterinarians
formed an organizing committee, of which Gillette served as
the chair. By at least as early as 2002, the committee began
using the mark as the name of the intended VSO. In the winter
of 2002, Lyons participated in drafting a letter of intent,
which was later submitted to the AVMA, and worked with the
organizing committee to create a petition to seek
accreditation for its VSO. In early 2004, Lyons drafted
proposed bylaws and articles of incorporation for the VSO,
which she presented to the organizing committee. In July
2004, Lyons was dismissed from the organizing committee for
reasons not relevant to this appeal.
a year after her dismissal from the committee, Lyons sought
registration of the mark on the Principal Register for
"veterinary education services namely conducting
classes, seminars, clinical seminars, conferences, workshops
and internships and externships in veterinary sports medicine
and veterinary rehabilitation" in International Class
41, based on her assertion of a bona fide intention to use
the mark in commerce under 15 U.S.C. § 1051(b).
Decision, 2016 WL 1380739, at *1. The PTO denied her
application on the ground that the mark was geographically
descriptive. In March 2006, Lyons therefore amended the
application to seek registration on the Supplemental
Register, based on actual use under 15 U.S.C. § 1091(a),
alleging first use anywhere as of December 20, 1995 and first
use in commerce at least as early as June 18, 1996. In May
2006, the PTO registered the mark on the Supplemental
Register, Registration No. 3, 088, 963.
the organizing committee, led by Dr. Gillette, had continued
to work on the VSO petition for AVMA accreditation and
submitted a first draft to the AVMA in November 2008. In
2009, the AVMA published the petition to its members in the
Journal of American Veterinary Medicine and in its
electronic newsletter. In 2010, the AVMA granted provisional
recognition to the VSO, which was entitled the "American
College of Veterinary Sports Medicine and
Rehabilitation" ("the College") and
incorporated as a Colorado non-profit organization in June
2011. The College administered its first certification test
in 2012 and subsequently certified over 115 veterinarians in
the specialty, established 13 active residency programs at
veterinary colleges, and conducted annual meetings,
conferences, and continuing education programs in
collaboration with other AVMA-certified VSOs.
April 25, 2011, the College petitioned to cancel Ly-ons's
registration on the Supplemental Register on grounds of
priority of use and likelihood of confusion under 15 U.S.C.
§ 1052(d), misrepresentation of source under 15 U.S.C.
§ 1064, and fraud. The cancellation proceeding was
suspended for almost three years during the pendency of a
civil action between the parties in the U.S. District Court
for the District of Massachusetts, where Lyons alleged
infringement of the mark by the College. See Lyons v. Am.
Coll. of Veterinary Sports Med. & Rehab.,
Inc., 997 F.Supp.2d 92, 98 (D. Mass. 2014). On
February 19, 2014, the district court issued a final order
dismissing Lyons's claims because, inter alia,
her claimed prior use did not cause the mark to acquire
distinctiveness in the public mind. Id. at 105. The
district court ordered the PTO to reject Lyons's
application for registration on the Principal Register, but
declined to cancel her registration on the Supplemental
Register. Id. at 116-17.
the district court's disposition, the Board refused
Lyons's application for registration on the Principal
Register, and resumed the cancellation proceeding relating to
the registration on the Supplemental Register. The Board
concluded that Lyons was not the owner of the mark, and that
the underlying application for her registration on the
Supplemental Register was void ab initio. See
Decision, 2016 WL 1380739, at *19.
Board explained that, although the cancellation proceeding
was initially brought on grounds of likelihood of confusion,
the "true issue [was] ownership of the mark" as
between "a former organizing committee member and . . .
the veterinary specialty organization she helped found."
Id. at *8 (citing 15 U.S.C. § 1051(a)). The
Board analyzed three factors to determine ownership of the
mark: (1) the parties' objective intentions or
expectations; (2) who the public associates with the mark;
and (3) to whom the public looks to stand behind the quality
of goods or services offered under the mark. See id.
at *9 (citing Wonderbread 5 v. Gilles, 115
U.S.P.Q.2d (BNA) 1296, 1305 (T.T.A.B. 2015)). The Board found
that all three factors favored the College.
the Board found that Lyons's interactions with the
organizing committee were in the nature of "proposing
and planning the formation of a [VSO], " not
"providing the services herself." Id. at
*10. The Board noted Lyons's behavior in helping to draft
the letter of intent, and in drafting the proposed bylaws and
articles of incorporation-all toward forming a VSO under the
name the organizing committee had already begun to use for
the VSO, the "American College of Veterinary Sports
Medicine and Rehabilitation" (i.e., the mark). See
id. at *10- 12. The Board also pointed to the testimony
of the other organizing committee members, who unanimously
agreed that Lyons never indicated that she considered the
mark to be her own or notified them that they were not to use
the mark after her departure from the committee. See
id. at *12-14. In fact, the Board observed, the
organizing committee believed that they had conceived of the
mark themselves. Id. at *13, *17. Thus, the Board
found that the objectively manifested intent of the parties
weighed in favor of ownership by the College. Id. at
the Board found that the relevant public associates the mark
with the College, rather than with Lyons. See id. at
*16. The Board observed that the College had certified
veterinarians in its specialty, had established residency
programs, conducted annual conferences and meetings,
maintained a public website, and is recognized as a specialty
on the AVMA's website, accessible to the 80, 000-plus
veterinarian AVMA members. See id. at *18. The Board
explained that, while Lyons used the mark in a non-published
document called "The Equine Excellence Initiative"
as early as 1995, such use was "not use in
commerce"-rather, it was "at most de
minimis use that never acquired distinctiveness."
Id. at *16-17. In fact, the Board found that The
Equine Excellence Initiative was written in the
future tense-detailing Lyons's plans for the VSO
she envisioned forming. Id. at *16. The Board noted
that Lyons does not employ any teachers, has no students, has
not yet acquired any physical premises for offering her
educational services, and has not certified any
veterinarians, and that her nonprofit organization (formed
before 1999) has no employees, volunteers, real estate, or
significant assets. Id. at *17. Furthermore, the
Board reasoned, because of Lyons's participation in the
organizing committee between 1999 and 2004, any actions by
Lyons "from that point on, " undertaken in the name
of the "American College of Veterinary Sports and
Rehabilitation Medicine" and resulting in acquired
distinctiveness of the mark, inured to the benefit of the
College. Id. at *18.
the Board found that the relevant public looks to the College
to stand behind the quality of the educational and
certification services associated with the mark. The Board
noted that veterinarians certified by the College "may
hold themselves out as diplomates in an AVMA-approved
specialty." Id. at *19. Moreover, the Board
continued, the College's very name-the American College
of Veterinary Sports Medicine and Rehabilitation-carries with
it the AVMA's "seal of approval" because almost
all AVMA-certified specialties (and none that are not
AVMA-certified) use the prefix "American College of
Veterinary" in the VSO name. Id. Thus, the
Board concluded that the public would look to the College to
stand behind the quality of the services associated with the
mark, rather than to Lyons, "who left the American
Veterinary Medical Association in 2005, abandoned all thought
of obtaining a certification from that Association, has no
students enrolled in educational courses offered under the
mark, and has no certification program." Id.
the Board concluded that all "indicia of ownership"
point to the College rather than to Lyons, and that the
application underlying her registration on the Sup- plemental
Register was ...