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Lyons v. American College of Veterinary Sports Medicine and Rehabilitation

United States Court of Appeals, Federal Circuit

June 8, 2017

SHEILA LYONS, DVM, Appellant
v.
THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION, Appellee

         Appeal 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 appellant.

          David A. Kluft, Foley Hoag, LLP, Boston, MA, argued for appellee. Also represented by Nicole Kinsley.

          Before Lourie, Wallach, and Stoll, Circuit Judges.

          LOURIE, CIRCUIT JUDGE.

         Sheila 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, we affirm.

         Background

         Lyons 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.

         Almost 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.

         Meanwhile, 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.

         On 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.

         After 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.

         The 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.

         First, 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 *14.

         Second, 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.

         Finally, 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.

         In sum, 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 ...


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