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  • The "noncommercial use" exception under the TDRA is not applicable in TTAB proceedings.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Even if we were to find that the "noncommercial use" exception under the TDRA were applicable in Board proceedings, we note that applicant's use or intended use of its marks would not qualify as "noncommercial use."
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • We note that the applicability of the "noncommercial use" exception as an affirmative defense to a dilution claim is an issue of first impression before the Board. For the reasons set forth below, the Board finds that the exception is inapplicable in Board dilution cases.
  • "Noncommercial use" has been referred to as constitutionally protected speech that consists of parody, satire, editorial and other forms of expression that are not part of a commercial transaction.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • "Noncommercial use" has been referred to as constitutionally protected speech that consists of parody, satire, editorial and other forms of expression that are not part of a commercial transaction. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 63 USPQ2d 1715, 1722 (9th Cir. 2002).
  • Use in commerce means a bona fide use of a mark in the ordinary course of trade.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • "Use in commerce means a bona fide use of a mark in the ordinary course of trade." Trademark Act Section 45.
  • A service mark is used in commerce when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • A service mark is used in commerce when the mark "is used or displayed in the sale or advertising of services [in this case transportation services] and the services are rendered in commerce." Id.
  • The "noncommercial use" exception (Trademark Act § 43(c)(3)(C)) does not apply in a proceeding involving a mark sought to be registered as a trademark or service mark, because an applicant seeking registration is necessarily relying on a claim of use of its mark, or intended use of its mark, in commerce.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Accordingly, we find that the "noncommercial use" exception set out in Trademark Act § 43(c)(3)(C) does not apply in a Board proceeding involving a mark sought to be registered as a trademark or service mark, because an applicant seeking registration is necessarily relying on a claim of use of its mark, or intended use of its mark, in commerce.4 FOOTNOTE 4 "In a federal district court action the defendant whose actions are alleged to result in dilution may or may not be engaged in activities "in commerce," and therefore the applicability of the noncommercial use defense will depend on the nature of the involved activity."
  • Just as every defendant is necessarily claiming use in commerce, or intended use in commerce, so too is the defendant necessarily claiming use as a mark, or intended use as a mark.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Again, in a Board proceeding, just as every defendant is necessarily claiming use in commerce, or intended use in commerce, so too is the defendant necessarily claiming use as a mark, or intended use as a mark. We agree with Professor McCarthy's analysis.
  • Case Finding: Applicant has not alleged that it is using or intends to use its marks as editorial commentary, satire or as a parody, in regard to opposer's pleaded AMERICAN EXPRESS marks. Rather, applicant merely relies on several cases arising in Federal courts, none of which addressed the question of registrability.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Applicant has not alleged that it is using or intends to use its marks as editorial commentary, satire or as a parody, in regard to opposer's pleaded AMERICAN EXPRESS marks. Rather, applicant merely relies on several cases arising in Federal courts, none of which addressed the question of registrability.
  • The mere fact that applicant may have chosen a mark for its historical significance or their evocation of another's art does not in and of itself create protected artistic expression or speech. If it were so, every dilution defendant employing a mark with any historical significance or artistic lineage could claim that its mark constitutes a form of artistic expression, and the exception would swallow the rule.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Applicant herein has merely chosen to adopt the marks GRAND AMERICAN EXPRESS and GRAND AMERICAN EXPRESS RAILROAD CLEVELAND AND COLUMBUS and design to evoke an historical era in connection with its identified transportation services based upon a lithograph by Currier & Ives. The mere fact that applicant may have chosen its marks for their historical significance or their evocation of another's art does not in and of itself create protected artistic expression or speech. If it were so, every dilution defendant employing a mark with any historical significance or artistic lineage could claim that its mark constitutes a form of artistic expression, and the exception would swallow the rule.
  • Applicant cannot claim noncommercial use of its marks when it is required to demonstrate use of its marks in commerce as service marks in order to obtain federal registrations.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • As such, applicant cannot claim noncommercial use of its marks when it is required to demonstrate use of its marks in commerce as service marks in order to obtain federal registrations.3 FOOTNOTE 3 "The Board notes that use of marks in conjunction with the rendering of free services still constitutes a "use in commerce" under the Trademark Act. In other words, a for profit sale is not required." See Capital Speakers, Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1035 fn. 3 (TTAB 1996).
  • The use of marks in conjunction with the rendering of free services still constitutes a "use in commerce" under the Trademark Act.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • As such, applicant cannot claim noncommercial use of its marks when it is required to demonstrate use of its marks in commerce as service marks in order to obtain federal registrations.3 FOOTNOTE 3 "The Board notes that use of marks in conjunction with the rendering of free services still constitutes a "use in commerce" under the Trademark Act. In other words, a for profit sale is not required." See Capital Speakers, Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1035 fn. 3 (TTAB 1996).
  • By filing a service mark application, applicant is seeking to obtain a federal service mark registration which would afford applicant nationwide protection of, and exclusive rights in, its marks as a source indicator for the services identified in its application. In order to obtain such registrations, applicant must demonstrate, prior to registration, use of its mark as a service mark in commerce.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • By filing its two service mark applications, applicant is seeking to obtain federal service mark registrations which would afford applicant nationwide protection of, and exclusive rights in, its marks as source indicators for the services identified in its applications. In order to obtain such registrations, applicant must demonstrate, prior to registration, use of its marks as service marks in commerce.
  • Case Finding: Applicant is not using or intending to use its marks as constitutionally protected political speech. Rather, the services identified in applicant's application are to be rendered in commerce, namely, transporting passengers by means of a 19th century replica train.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Here, applicant is not using or intending to use its marks as constitutionally protected political speech. Accordingly, applicant's reliance on Am. Family Life Ins. Co. is misplaced. Rather, the services identified in applicant's application are to be rendered in commerce, namely, transporting passengers by means of a 19th century replica train.
  • A party cannot seek to register or maintain a trademark or service mark for its own exclusive use in commerce in association with its identified goods or services and then claim that it is not using its mark commercially as a defense to a dilution claim.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In other words, a party cannot seek to register or maintain a trademark or service mark for its own exclusive use in commerce in association with its identified goods or services and then claim that it is not using its mark commercially as a defense to a dilution claim.
  • Regardless of whether the use of the allegedly dilutive designation is in commerce or not, its use as a mark, per se, renders the noncommercial use defense inapplicable.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In other words, regardless of whether the use of the allegedly dilutive designation is in commerce or not, its use as a mark, per se, renders the noncommercial use defense inapplicable.
  • Because TTAB proceedings are by their nature limited to issues regarding the registrability of trademarks or service marks, rather than song titles, product reviews, and other non-mark uses, and the involved marks necessarily are used or intended to be used in commerce as indicators of source for goods or services, the "noncommercial use" exception under the TDRA is not applicable as an affirmative defense to a claim of dilution in TTAB proceedings.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In sum, because Board proceedings are by their nature limited to issues regarding the registrability of trademarks or service marks, rather than song titles, product reviews, and other non-mark uses, and the involved marks necessarily are used or intended to be used in commerce as indicators of source for goods or services, the "noncommercial use" exception under the TDRA is not applicable as an affirmative defense to a claim of dilution brought under the TDRA in Board proceedings.
  • Case Finding: Applicant is not using or intending to use its marks to parody or to make any type of social commentary regarding opposer, opposer's pleaded marks or the services associated therewith. Rather, applicant is merely seeking exclusive rights to use its marks as a source indicator for its identified commercial services. Accordingly, applicant's reliance on the Mattel decision is also misplaced.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In this instance, applicant is not using or intending to use its marks to parody or to make any type of social commentary regarding opposer, opposer's pleaded marks or the services associated therewith. Rather, applicant is merely seeking exclusive rights to use its marks as a source indicator for its identified commercial services. Accordingly, applicant's reliance on the Mattel decision is also misplaced.
  • It would contradict the purpose of the Trademark Act to allow a defendant in a dilution case to assert the "noncommercial use" exception as an affirmative defense when it must establish use of its mark in commerce as a trademark or service mark in order to obtain a federal trademark or service mark registration.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Indeed, it would contradict the purpose of the Trademark Act to allow a defendant in a Board dilution case to assert the "noncommercial use" exception as an affirmative defense when it must establish use of its mark in commerce as a trademark or service mark in order to obtain a federal trademark or service mark registration.
  • If a defendant uses an alleged famous mark as a trademark for its own goods and services, then the defendant is disqualified from invoking the "noncommercial use" exception.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Second, one leading trademark scholar has suggested that if a defendant uses an alleged famous mark as a trademark for its own goods and services, then the defendant is disqualified from invoking the "noncommercial use" exception. See J.T. McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 24:128 pp. 1-2 (4th ed. Database updated March 2010). See also, H.R. Rep. No. 104-374 (1995) in regard to the previous dilution statute's noncommercial use exception, unchanged in the TDRA.
  • Discussion of the Louis Vuitton decision regarding the "fair use" and "noncommercial use" exception under the TDRA.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • We further note that the Louis Vuitton decision concerns the "fair use" exception and not the "noncommercial use" exception under the TDRA. On this point alone, the case is inapposite to the issue before the Board. Moreover, the court in Louis Vuitton held that if a party is using its mark as a trademark, as is the case herein with applicant, the "fair use" exception is inapplicable. Accordingly, if we were to analogize the "fair use" exception with the "noncommercial use" exception, the Louis Vuitton case would contradict applicant's position, because applicant here intends to use and seeks to register its designations as service marks. Finally, unlike the defendant in the Louis Vuitton case, applicant is not using or intending to use its marks as a parody.
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