Maintaining a social media profile has become standard practice for most businesses advertising their services. Savvy trademark owners may also know that they must “use” their mark in order to establish trademark rights – meaning that the mark must be actually used in connection with providing a good or service. But what type of use is sufficient? Is simply using a mark on a Facebook or Twitter profile enough to show “use” of the mark for trademark purposes? A Trademark Trial and Appeal Board (TTAB) decision says no, but offers useful guidance to trademark owners on using “analogous” trademark use to establish trademark rights. The decision is The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC.
Spendology attempted to register the mark SPENDOLOGY for web-based personal finance tools. PNC Financial Services Group (PNC), which used the same mark for an “online money management tool,” opposed Spendology’s application, claiming that PNC had used the mark first. Both parties filed motions for summary judgment for likelihood of confusion and priority. Likelihood of confusion was stipulated because the marks were identical and services were related, so the only issue before the TTAB was each party’s claim that it had used the mark first. Spendology had a use date of October 25, 2011 (based on the filing date of its application), but claimed first use “analogous” to trademark use as early as June 15, 2010. PNC claimed trademark rights based on use as of August 26, 2010.
The TTAB thus had to determine whether Spendology’s analogous trademark use did indeed begin on June 15, 2010 (which would predate PNC’s date of use and give Spendology priority over the mark.) In practice, as noted by commentators for the International Trademark Association, analogous use often involves pre-sale (or pre “use”) activities that can “tack on” time to the date of actual use in order to establish priority. In Spendology, the TTAB noted that analogous use is use that “create[s] an association in the minds of the purchasing public between the marks and the goods.”
Spendology, LLC offered the following evidence in support of its analogous use claim: a personal budget survey, an undated budget presentation, two SPENDOLOGY beta website pages (which could not be authenticated because they had no date or URL, and did not mention the services), a tweet using the mark, a Facebook page, domain name registration, blog posts, internal emails and a press release that referenced the mark.
According to the TTAB, Spendology, LLC’s evidence fell short because it did not show an explicit connection between the mark and the services. The evidence simply advertised the owner or its related services. Weighing the Twitter and Facebook evidence, the TTAB noted that the act of joining Twitter or Facebook is not by itself enough to show analogous use. Similarly, Spendology, LLC’s tweet – even one that used the mark – simply asked a generic question, and its Facebook post only linked to third-party articles about financial services.
The TTAB did not accept either of these social media uses as analogous use, in part because there was no explicit connection to the services, and because the effect of Spendology, LLC’s social media use on potential consumers was unclear. As the TTAB noted, “there is no declaration testimony as to consumer exposure to [Spendology’s] blog posts, twitter page, tweets, or Facebook page. None of this evidence shows use in connection with [Spendology’s] identified services.” Similarly, the internal email and press release were discounted because they did not reference the services.
PNC, on the other hand, submitted declarations by its executive, corroborated by website print-outs, that the mark was used in connection with its services as early as August 2010. The TTAB gave a lot of weight to PNC’s supporting declarations, and to Spendology’s lack of them. Having found that PNC’s use of SPENDOLOGY pre-dated Spendology’s use, the TTAB granted summary judgment in favor of PNC.
Trademark owners relying on analogous use need to show a direct link between any use of their mark and the good or services. This is especially true of advertising a mark using social media, where owners may mistakenly think that making a page for their mark, commenting on their industry, or engaging with consumers, is enough to show use. While these are certainly good forms of advertising, they may not be enough to show analogous use without direct and explicit references to the services. Finally, where possible, trademark owners should be prepared to provide statements from people with knowledge of the marks that any analogous use actually reached consumers.
Analogous use can provide a basis for mark owners to show priority of use, but evidence should be consistent, corroborated, and clearly reference the owner’s services.
UPDATE: Spendology could have appealed the TTAB’s decision to federal district court, but did not do so. Instead, Spendology filed a separate infringement action in U.S. District Court for the District of Maryland. Spendology’s federal district court infringement action was dismissed based on the 2015 U.S. Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., which held that the concept of “issue preclusion” (also sometimes called “collateral estoppel”) barred a court from hearing substantially identical issues that were previously litigated and rejected in a separate case – including a separate case in the TTAB has already ruled on those same issues. Similar to Spendology, in B&B Hardware the Supreme Court held that a previous TTAB refusal of registration based on likelihood of confusion was authoritative to dismiss the same mark owner’s subsequent claim of infringement, since the determinative issues for an infringement claim and likelihood of confusion refusal were effectively identical.
