A use-based trademark registration could be void if the trademark was not used for the identified services prior to the application filing date. See Aycock Eng'g Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009); see also ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012) (citing Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006)).

The actual goods or services must have been rendered on or before the filing date of the application. See, e.g., Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015) (use of the service mark “Playdom” to advertise goods and services on a website that was under construction, where no goods or services were ever provided, does not constitute “use in commerce” for identified Class 41 entertainment services); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1044 (TTAB 2014) (use-based application for BEAUTV void ab initio where applicant had not rendered any of the services, identified as “providing information about beauty,” before or at the time the application was filed); In re Cedar Point, Inc., 220 USPQ 533, 535 (TTAB 1983) (use-based application for OCEANA for “marine entertainment park” void ab initio where applicant began to issue press releases, brochures, and flyers, advertising the new marine entertainment park addition to applicant's amusement park, but the new addition was not open for business when the application was filed).  

Under Trademark Act § 45, the “use in commerce” requirement for a mark used in conjunction with services is divided into two parts: (1) when it is used or displayed in the sale or advertising of services; and (2) the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. See also Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015).

MRS. COLORADO Pageant

In Miss United States of America LLC, DBA United States of America Pageants v.Abundance Productions, LLC, Cancellation No. 92071814 (TTAB Mar. 8, 2024), the TTAB found that the registered trademark MRS. COLORADO was void ab initio.

The Mrs. Colorado beauty pageant was started in 1938.

On October 15, 2008, the trademark was assigned to Mrs. Patricia Dampier, who earned the MRS. COLORADO title in 1989, and had operated the pageant under the MRS. COLORADO name since 1990. U.S. Reg. No. 3259786 for the MRS. COLORADO mark was part of the assignment.

On January 12, 2009, Mrs. Dampier entered into an agreement to license the registered MRS. COLORADO trademark to Abundance Productions, LLC, whose principal had been directing and producing the MRS. COLORADO pageant since 2008.

The license agreement was terminated on April 20, 2015, but Abundance was given permission to continue using “Mrs. Colorado America” for its pageant activities through December 2017.

On February 16, 2018, U.S. Reg. No. 3259786 was cancelled by the USPTO after Mrs. Dampier failed to file the declarations of use and renewal required under Sections 8 and 9 of the Trademark Act.  

On March 28, 2018, Abundance then filed a new MRS. COLORADO trademark application for “Entertainment in the nature of beauty pageants,” claiming a date of first use in commerce and anywhere of June 2, 2008. The registration issued on November 6, 2018.

In the meantime, Miss United States of America LLC began operations in January 2018 to recruit pageant contestants from across the United States, and operate pageants in a number of states, including Colorado. Their Colorado pageant uses the title “United States of America's Mrs. Colorado” or “USOA Mrs. Colorado.”

After Abundance sent a cease-and-desist letter to Miss United States of America, they sought to cancel Abundance's registered MRS. COLORADO trademark based on, among other grounds, non-use of the mark at the time of Abundance's used-based trademark filing.

The TTAB sided with Miss United States of America because although Abundance had been engaged in preparatory efforts for the 2018 MRS. COLORADO pageant since at least April 2017, and had sold online tickets to the public since at least January 25, 2018—the actual date of the pageant was April 16, 2018, which was subsequent to the March 28, 2018 trademark application filing.

Ticket sales (online or at the box office) and preparatory activities such as marketing and advertising do not amount to rendering “Entertainment in the nature of beauty pageants.” See, e.g., In re Cedar Point, 220 USPQ at 535.

          Respondent did not render its entertainment services until its 2018 MRS. COLORADO Pageant actually took place.

***

          Furthermore, we find that Respondent's licensed use of the Prior Registration does not qualify as rendering “Entertainment in the nature of beauty pageants.” Under the terms of the license agreement, all of the goodwill pertaining to the Prior Registration belonged to Mrs. Dampier, and all rights resulting from the use of the Prior Registration inured to the benefit of Mrs. Dampier.25 See also Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1034-36 (TTAB 2017) (“It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner.”) (citations omitted).

Accordingly, the TTAB held that Abundance's registered trademark was void ab initio because Abundance “had not used the MRS. COLORADO mark as of the March 28, 2018 application filing date.”

An anonymous commenter on TTABlog suggested that an intent-to-use (“ITU”) trademark application under Section 1(b) could have avoided this harsh result. 

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