Trademark Trial and Appeal Board Upholds Cancellation Of EVERWISE CREDIT UNION Mark Due To Lack Of Bona Fide Use In Commerce

The Trademark Trial and Appeal Board’s (the “Board”) affirmed the Examiner’s decision to cancel Registrant Everwise Credit Union’s standard character mark EVERWISE CREDIT UNION for financial services as the Registrant “fail[ed] to demonstrate bona fide use in commerce of [its mark] as a source indicator in rendering the identified services as of the [Statement of Use] Deadline.”¹ Originally brought as a petition for reexamination, this appears to be the first review of a reexamination decision by the Board.

On review, “[t]he sole issue before the Board [was] whether Registrant…submitted information and evidence sufficient to establish use in commerce of the EVERWISE CREDIT UNION mark with the identified services as of the relevant date.”² The Board concluded that Registrant failed to provide evidence showing a bona fide use in commerce of its mark EVERWISE CREDIT UNION in connection with financial services as of the Statement of Use deadline.³ The Board also stated that Registrant’s use of the EVERWISE CREDIT UNION mark on its website was submitted for the purpose of reserving the mark for use at a future date, which was “exactly the type of use the [Trademark] statute was designed to avoid.”⁴

Registrant Everwise Credit Union (“Registrant”) filed an application for the standard character mark EVERWISE CREDIT UNION for financial services.⁵ After registration, “a third party filed a petition for reexamination arguing that Registrant’s EVERWISE CREDIT UNION mark was not in use in commerce for any of the listed International Class 36 services as of the [Statement of Use] Deadline.”⁶ The main issue surrounding this petition was whether Registrant’s website, which contained an announcement that Registrant intended to rebrand from Teachers Credit Union to Everwise Credit Union, was a bona fide use in commerce.⁷ Based on the evidence submitted by the third party petitioner,⁸ the Examiner found that “Registrant’s EVERWISE CREDIT UNION mark was not in use in commerce as of the [Statement of Use]” deadline with any of the Class 36 services listed in the registration.”⁹

The Registrant subsequently submitted additional evidence¹⁰ and argued that it “used EVERWISE CREDIT UNION as a mark in U.S. commerce in connection with the registered services since at least as early as” “the date of first use listed in its registration.” Ultimately, “the Examiner issued a Final Office Action finding that Registrant failed to rebut the prima facie evidence showing that Registrant was not using its EVERWISE CREDIT UNION mark in commerce, as of the [Statement of Use] Deadline, in connection with its listed Class 36 services” because “Registrant’s declaration and accompanying marketing evidence did not show a bona fide use of the EVERWISE CREDIT UNION mark.” ¹¹ The Examiner explained that the mark was not prominently shown on Registrant’s website and “[did] not show use of the mark in relation to the services¹².” Registrant then submitted this appeal.

Registrant’s Argument

The Registrant argued on appeal that its website showed bona fide use of its mark EVERWISE CREDIT UNION in commerce in connection with Class 36 services for the following reasons:

• The website displayed the mark at the top of the webpage on a section describing what it meant to be a credit union.¹³
• The paragraph on the website labeled “Now, back to our name,” states that Registrant is “everwise credit union.”¹⁴
• The sworn declaration clarifies that the mark EVERWISE CREDIT UNION was used in advertising.¹⁵
• “[T]he USPTO Attorney [] failed to cite any legal support that imposes a strict requirement on Registrant to use the mark EVERWISE CREDIT UNION on every section of its webpage or on a certain number of materials.”¹⁶

Examiner’s Argument

The Examiner argued on appeal that none of the evidence submitted by Registrant (its website, declaration, and advertising materials) show a bona fide use of its mark EVERWISE CREDIT UNION in connection with Class 36 services¹⁷ for the following reasons:

• “EVERWISE CREDIT UNION is not prominently featured on the page or in association with the registered services, especially compared to the TCU or TEACHERS CREDIT UNION marks.”¹⁸
• Registrant’s webpage actually demonstrates use of the marks TCU and TEACHERS CREDIT UNION in connection with the financial services.
• EVERWISE CREDIT UNION only appears on Registrant’s website three times, once as part of a tagline and not prominently displayed and the other two times it is buried in text and not prominently displayed on the page.¹⁹
• There were similar issues with Registrant’s sworn declaration.²⁰

“Use in commerce” is defined as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”²¹ A mark is deemed to be a use in commerce “on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and in a foreign country and the person rendering the services is engaged in commerce in connection with the services.”²² “[U]se made merely to reserve a right in a mark does not satisfy the use requirements for registration.”²³ This has been termed as “token use” or “use made merely to reserve a right in a mark” and is not allowed.

The Board takes a flexible approach to “use in commerce” and allows it to “encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval, and to preserve ownership rights in a mark if, absent an intent to abandon, use of a mark is interrupted due to special circumstances.”²⁴

The Board ruled that the Registrant did not show a use in commerce of its EVERWISE CREDIT UNION mark on its specimen or through the declaration. The Board did not agree with Registrant’s argument that its website showed use in commerce of its mark EVERWISE CREDIT UNION, even though the Examining Attorney had previously accepted a screenshot of the website as a specimen prior to this proceeding.²⁵ Registrant’s webpage only listed the EVERWISE CREDIT UNION mark three times with two of those instances having the mark buried in text. The other instance with the mark in the tagline is merely “made in an attempt to reserve a right in the mark until Registrant was actually using the mark in commerce in connection with its financial services.”²⁶ The Board found that Registrant’s application to change its name from Teachers Credit Union to Everwise Credit Union was after the Statement of Use deadline.²⁷ The Board further stated that “[w]e find it quite remarkable that Registrant, in its attempts to rebut the prima facie showing of nonuse, could not produce a single additional document that uses the wording EVERWISE CREDIT UNION as a source indicator of its financial services.”²⁸ The Board explained that if it were actually providing its services under the mark, we would expect “e.g., pictures of signage of its brick-and-mortar facilities, copies of checks that are provided to consumers via their banking services, communications with clients, business cards, brochures of their financial services, debit and credit cards, etc.”²⁹ The Board also found that the marks TCU or TEACHERS CREDIT UNION appeared throughout Registrant’s exhibits rather than EVERWISE CREDIT UNION. Therefore, the Board agreed with the Examiner’s argument that Registrant did not establish a bona fide use of its EVERWISE CREDIT UNION mark as of the Statement of Use deadline.