By Bryan K. Wheelock, Principal
In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION. Lyons participated in the organization of a committee under the auspices of the American Veterinary Medical Association using the name THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION. A year after Lyons was dismissed from the committee, she sought and obtained registration of THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION on the Supplemental Register.
The committee petitioned to cancel the Lyon’s registration based on priority of use and Lyons’ fraud in procuring the registration. The cancellation was suspended during the pendency of a civil action between the parties in which Lyons alleged infringement of her registration. The district court found that the mark had not acquired distinctiveness, but did not cancel the registration. When the cancellation proceeding resumed, the Board concluded that Lyon’s application was void ab initio because she did not own the mark.
The Federal Circuit said that it was axiomatic in trademark law that ownership of a mark is predicated on priority of use in commerce. Thus, the Federal Circuit reasons, registration by one who did not own the mark at the time of filing renders the underlying application void ab initio. The Federal Circuit agreed with the Board that Lyons did not own the mark, and approved the Board’s legal framework for evaluating ownership, which included: (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.