UnIntellectual Property (UnIP): Token Use of Trademark for Free TV Program

The United States District Court for the Northern District of Iowa has reinforced a bedrock principle of trademark law – the requirement that a trademark be used in interstate commerce in order to qualify for protection.  The case involved a producer of religious-based television programs who claimed ownership of a service mark registered with the United States Patent and Trademark Office (USPTO) for “THE GATE.”  Plaintiff filed suit against the television production company who had applied for “THE GATES” mark for use on crime drama television program.  The Examining Attorney initially refused Defendant’s trademark application due to a likelihood of consumer confusion, despite Defendant arguing to the contrary.  Plaintiff filed suit alleging trademark infringement, false designation of origin, and unfair competition in violation of Lanham Act and Iowa law. Defendant counterclaimed for cancellation of trademark for non-use and cancellation due to fraud on the USPTO.  Defendant moved for summary judgment and the Iowa Court granted it.
In doing so, the Court agreed with Defendant’s position that at the time Plaintiff filed for its trademark application it was not using the mark in interstate commerce, and thus it could be cancelled based upon fraud.  The Court noted the standard as follows:
For service marks, the “use in commerce” requirement is met when (1) a mark is “used or displayed in the sale or advertising of services” and (2) either (I) the services are “rendered in commerce” or (ii) the services are “rendered in more than one State or in the United States and a foreign country and the person rendering those services is engaged in commerce in connection with the services.”
Since Plaintiff offered its television programs free of charge and only in Iowa, it had failed to use the mark in commerce.  The Court cites numerous cases as support for its decision, including one “holding that the mark holder did not use its mark in the ordinary course of trade because its initial activities were “never intended to generate revenue” but were instead intended to “generate a market for services that had not yet been developed but would be offered in the future”.”  Ultimately, Plaintiff’s mark was cancelled.
This case appears to be one that is very fact specific, especially where the Court deems a use as a token use only.  Typically the use in commerce requirement for services is satisfied today by use on a website with a reach beyond one state.  However, this Court found that the lack of a commercial use (i.e. money generating use), let alone one outside the state of Iowa, rendered its use insufficient for trademark protection at the time it filed its USPTO trademark application.

Scorpiniti v. Fox Television Studios, Inc., 918 F. Supp. 2d 866 (N.D. Iowa 2013).


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