United States Postal Servicev.ePostal Services, Inc.

Trademark Trial and Appeal Board

Sep 7, 2018

No. 92060891 (T.T.A.B. Sep. 7, 2018)

WINTER Mailed: September 7, 2018

Cancellation No. 92060891
United States Postal Service

v.
ePostal Services, Inc.

Before Bergsman, Kuczma and Goodman,
Administrative Trademark Judges.

By the Board:
The United States Postal Service (“Petitioner”) seeks to cancel the trademark
registration owned by ePostal Services, Inc. (“Respondent”) for the standard
character mark THE INTERNET POST OFFICE – FOR PREMIUM VALUE EMAIL
SERVICES for “telecommunication services, namely, fee-based email forwarding
services via the internet,” issued on the Supplemental Register.1 In its amended
petition for cancellation (14 TTABVUE 5-7), Petitioner alleges four grounds for
cancellation, namely, false suggestion of a connection, likelihood of confusion with
Petitioner’s prior registered marks, deceptive misdescriptiveness, and that “the term

1 U.S. Reg. No. 3750820, issued February 16, 2010. Respondent disclaimed the exclusive right
to use the wording “FOR PREMIUM VALUE EMAIL SERVICES.” The identified dates of
first use anywhere and first use in commerce are February 2003, and September 2006,
respectively.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92060891

2
for which registration has been obtained has not been used as a trademark or service
mark” (14 TTABVUE 7). In support of its claims, Petitioner pleads common law rights
in “POST OFFICE,” as well as ownership of ten registered marks containing the
wording “UNITED STATES POST OFFICE” or “POST OFFICE” for various goods
and services.2 Petitioner attached to its amended pleading printouts regarding those

2 The ten registered marks pleaded by Petitioner are as follows:

(1) U.S. Reg. No. 4475354, issued January 28, 2014, for the mark UNITED STATES
POST OFFICE in standard characters and claiming acquired distinctiveness in part
as to “UNITED STATES” for various real estate services; claiming 1937, as the date
of first use anywhere and in commerce.

(2) U.S. Reg. No. 4294815, issued February 26, 2013, for the mark A POST OFFICE IN
YOUR HAND in standard characters for, inter alia, “sorting, handling, and receiving
packages and letters” and “pick-up, transportation, and delivery of packages and
documents by various modes of transportation;” claiming July 25, 2011, as the date of
first use anywhere and in commerce.

(3) U.S. Reg. No. 3234924, issued April 24, 2007, for the mark U.S. POST OFFICE (and
five star design), claiming acquired distinctiveness in part as to “U.S. POST OFFICE”
for, inter alia, “pickup, transportation, and delivery of postcards, letters, packages,
advertisements, catalogs, publications, invoices, and other items of mail;” claiming
April 1, 2006 as the date of first use anywhere and in commerce; Sections 8 & 15
affidavits accepted and acknowledged, May 10, 2013, 15 U.S.C. §§ 1058 and 1065;
renewed June 10, 2017, 15 U.S.C. § 1059.

(4) U.S. Reg. No. 3807048, issued June 22, 2010, for the mark POST OFFICE OPOLY in
standard characters for “board games and equipment sold as a unit for playing board
games,” claiming December 8, 2008, as the dates of first use anywhere and in
commerce; Sections 8 & 15 affidavits accepted and acknowledged, August 24, 2016.

(5) U.S. Reg. No. 2840534, issued May 11, 2004, for the mark BRINGING THE POST
OFFICE TO THE PEOPLE (typed drawing) for a wide variety of services in
International Classes 35, 36, 38, 39, and 42, including, inter alia, “electronic postage
services, namely, applying postage to electronic documents, and applying postage to
documents via a global computer information network,” “electronic mail services,
namely, receiving and transmitting electronic messages, documents and data;
electronic mail services, namely, transmitting secure messages, documents and data,
and forwarding electronic mail,” “electronic storage of messages and data,” and
“postmarking electronic communications and documents, namely, authentication of
computerized electronic mail through the use of security, electronic signature,
postmarking, certificates of authenticity, encryption services and applying water-
Cancellation No. 92060891

3
registrations from the Trademark Electronic Search System (TESS) (14 TTABVUE
11-27), thereby making them part of the record pursuant to Trademark Rule
2.122(d)(1), 37 C.F.R. § 2.122(d)(1). In its amended answer (25 TTABVUE),

marks to electronic documents;” claiming December 23, 2003, as the dates of first use
anywhere and in commerce; Sections 8 & 15 affidavits accepted and acknowledged,
May 17, 2010; renewed May 11, 2014.

(6) U.S. Reg. No. 2295478, issued November 30, 1999, for the mark UNITED STATES
POST OFFICE (and eagle design), and claiming acquired distinctiveness in part as to
“UNITED STATES POST OFFICE” for, inter alia, “mail services, namely, sorting,
handling, and receiving packages and letters;” and “postal services, namely,
packaging articles for transportation, letter and parcel delivery,” and claiming August
1995, as its date of first use anywhere and in commerce; Sections 8 & 15 affidavits
accepted and acknowledged, January 11, 2006; renewed January 19, 2010.

(7) U.S. Reg. No. 3522952, issued October 28, 2008, for the mark PERSONAL POST
OFFICE (typed drawing) for “hand-held metal scales for weighing letters and small
packages,” claiming July 15, 1992, as its date of first use anywhere and in commerce;
Sections 8 & 15 affidavits accepted and acknowledged, October 8, 2014.

(8) U.S. Reg. No. 2295423, issued November 30, 1999, for the mark UNITED STATES
POST OFFICE EXPRESS (and eagle design) and claiming acquired distinctiveness in
part as to “UNITED STATES POST OFFICE” for, inter alia, “mail services, namely,
sorting, handling, and receiving packages and letters;” claiming August, 1995, as its
date of first use anywhere and in commerce; the term EXPRESS is disclaimed;
Sections 8 & 15 affidavits accepted and acknowledged, August 18, 2006; renewed
December 3, 2009.

(9) U.S. Reg. No. 2295422, issued November 30, 1999, for UNITED STATES POST
OFFICE EXPRESS (typed drawing) and claiming acquired distinctiveness in part as
to “UNITED STATES POST OFFICE” for, inter alia, “mail services, namely, sorting,
handling, and receiving packages and letters;” claiming August 1995, as its date of
first use anywhere and in commerce; the term EXPRESS is disclaimed; Sections 8 &
15 affidavits accepted and acknowledged, August 18, 2006; renewed December 3,
2009.

(10) U.S. Reg. No. 2295192, issued November 30, 1999, for UNITED STATES POST
OFFICE (typed drawing) and claiming acquired distinctiveness as to “UNITED
STATES POST OFFICE” for, inter alia, “mail services, namely, sorting, handling, and
receiving packages and letters” and “postal services, namely, packaging articles for
transportation, letter and parcel delivery and parcel delivery and rental of mailboxes;”
claiming 1937 as its date of first use anywhere and in commerce; Sections 8 & 15
affidavits accepted and acknowledged, January 11, 2006; renewed January 15, 2010.

Cancellation No. 92060891

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Respondent denies the salient allegations in the amended petition for cancellation
and asserts the affirmative defenses of laches, acquiescence, waiver, and equitable
estoppel.3
This case now comes up for consideration of Respondent’s motion (filed
October 16, 2017) for partial summary judgment on Petitioner’s false suggestion of a
connection, likelihood of confusion, and deceptive misdescriptiveness claims and on
two of Respondent’s affirmative defenses, namely, laches and equitable estoppel; and
Petitioner’s motion (also filed October 16, 2017) for summary judgment on all four of
its claims, i.e., the foregoing three claims plus “the term for which registration has
been obtained has not been used as a trademark or service mark,” and on Applicant’s
four affirmative defenses, namely, laches, acquiescence, waiver, and equitable
estoppel. The motions are fully briefed.
I. PRELIMINARY MATTERS:
A decision on a motion for summary judgment necessarily requires a review of
the operative pleadings to determine the legal sufficiency of the claims. See Fed. R.
Civ. P. 56(a); see, e.g., Asian and W. Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478,
1480 (TTAB 2009). In that regard, we review the requirements for registering a mark
on the Supplemental Register and the grounds for cancelling such a mark to
determine whether Petitioner has set forth a valid basis for cancelling Respondent’s
registration.

3 Respondent’s fourth affirmative defense, i.e., that there is no likelihood of confusion, is
merely an amplification of Respondent’s denials of Petitioner’s claim and is not a true
affirmative defense. Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§ 311.02(d) (June 2018).
Cancellation No. 92060891

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A mark is entitled to registration on the Supplemental Register if it is not
registrable on the Principal Register, so long as it is capable of distinguishing the
applicant’s goods or services; it is not otherwise prohibited under subsections 2(a),
(b), (c), (d) and (e)(3) of Section 2 of the Trademark Act, 15 U.S.C. §§ 1052(a), (b), (c),
(d) and (e)(3);4 and the designation is in lawful use in commerce by the owner thereof
on or in connection with any goods or services. Section 23 of the Trademark Act, 15
U.S.C. § 1091.
Section 24 of the Trademark Act, 15 U.S.C. § 1092, sets forth two grounds for
cancellation of a registration on the Supplemental Register, namely, that the
registrant is not entitled to registration, or that the mark has been abandoned.5
A. PETITIONER’S CLAIM THAT THE MARK IS DECEPTIVELY
MISDESCRIPTIVE

Petitioner alleges in the amended petition to cancel that Respondent’s mark is
deceptively misdescriptive of Respondent’s services (¶¶ 23, 25-26; 14 TTABVUE 6-7).
While a deceptively misdescriptive mark is unregistrable under Section 2(e)(1) of the

4 Additionally, for purposes of registration on the Supplemental Register, a mark may not
comprise any matter that as a whole is functional. See Kistner Concrete Prod., Inc. v. Contech
Arch Tech., Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (discussing the Technical Corrections
to Trademark Act of 1946, Pub. L. No. 105-330, § 201, 112 Stat. 3064, 3069, which amended
the Trademark Act to expressly prohibit registration on either the Principal or Supplemental
Register of functional matter).

5 A third basis for cancellation of a supplemental registration, “is not used by the registrant,”
previously set forth in Section 24 of the Trademark Act (15 U.S.C. § 1092) was deleted by the
TLRA. In explaining the amendment, the Senate Judiciary Report stated, “if strictly applied,
[the phrase] is contrary to the abandonment provision of the Act; it implies that abandonment
of a mark could be based on as little as one week of non-use.” Appendix A5. Selected
Legislative History of the 1988 Trademark Law Revision Act: Senate Judiciary Report on
S. 1883, 7 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
Appendix A5.

Cancellation No. 92060891

6
Trademark Act, 15 U.S.C. § 1052(e)(1), on the Principal Register, it may be registered
on the Supplemental Register. See Section 23 of the Trademark Act, 15 U.S.C. § 1091;
Trademark Manual of Examining Procedure (TMEP) § 1209.04 (Oct. 2017).
Accordingly, Petitioner’s deceptively misdescriptive claim is not a viable claim, will
not be considered, and is hereby stricken.6 See Fed. R. Civ. P. 12(f); Trademark Rule
2.116(a), 37 C.F.R. § 2.116(a). In view thereof, the parties’ respective motions for
summary judgment are moot as to this ground.
B. PETITIONER’S CLAIM THAT THE MARK IS NOT USED AS
A SERVICE MARK

Petitioner alleges in its amended petition that Respondent’s mark is buried
within other text on a subpage of Respondent’s website, and that “on information and
belief, Respondent is not using the Mark as a trademark or service mark” (¶ 31; 14
TTABVUE 7). However, as discussed in further detail infra, Petitioner argues in its
motion for summary judgment that the involved mark was never used in commerce
in connection with the services recited in the registration and that the involved
registration should be cancelled (32 TTABVUE 15-20).
In its October 25, 2016 order, the Board construed Petitioner’s ambiguous
allegations solely as a failure to function as a mark claim (22 TTABVUE 9). Based on
the arguments in Petitioner’s motion, and Respondent’s response thereto, Petitioner
asserts that Respondent is not entitled to maintain its registration because the mark
has not been used in commerce. See City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion

6 To the extent that the Board previously accepted Petitioner’s claim under Section 2(e)(1),
15 U.S.C. § 1052(e)(1), i.e., that Respondent’s mark is deceptively misdescriptive of the
identified services (14 TTABVUE 6 and 22 TTABVUE 7-8), said orders are vacated.
Cancellation No. 92060891

7
OPGI Inc., 106 USPQ2d 1668, 1674-75 (TTAB 2013) (“the underlying basis for both
of petitioner’s claims in this proceeding is that any use by respondent of the term
TREASURYNET has thus far been solely for respondent’s internal use, not for use
by others, and thus the term was never used in commerce in connection with the
services recited in the registration …”). In view of the arguments asserted by
Petitioner in its motion, e.g., that “there is no evidence that [the identified services]
are accessible or used by anyone other than Respondent” (32 TTABVUE 18), we
construe Petitioner’s allegations that Respondent is “not using the Mark as a …
service mark” (14 TTABVUE 7) as a claim under Trademark Act Section 24, 15 U.S.C.
§ 1092, viz., that Respondent’s registered mark is not entitled to registration on the
ground that the mark was never used in commerce in connection with the services
recited in the registration. See id.
C. RESPONDENT’S EQUITABLE DEFENSES; APPLICABILITY TO
NON-USE IN COMMERCE CLAIM

We also consider whether any of Respondent’s pleaded equitable defenses are
viable against Petitioner’s claim that Respondent’s mark is not used in commerce.
In all inter partes proceedings, equitable principles of laches, estoppel, and
acquiescence, where applicable, may be considered and applied. Section 19 of the
Trademark Act, 15 U.S.C. § 1069. The equitable defenses of laches, estoppel or
acquiescence, and waiver are not available to a defendant against claims of
abandonment. See, e.g., Linville v. Rivard, 41 USPQ2d 1731, 1733 n.5 (TTAB 1997),
aff’d on other grounds, 133 F.3d 1446, 45 USPQ 1374 (Fed. Cir. 1998); TBC Corp. v.
Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989). For the same reason that equitable
Cancellation No. 92060891

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defenses will not defeat a claim of abandonment (as discussed infra, see, e.g., Saint-
Gobain Abrasives, Inc. v. Unova Indus. Automation Sys., Inc., 66 USPQ2d 1355, 1359
(TTAB 2003); Linville, 41 USPQ2d at 1733 n.5), we find that these equitable defenses
will not bar a non-use claim or a claim that a mark is not used in commerce.
“Abandonment” occurs when, inter alia, use of a mark has been discontinued with
intent not to resume use. Trademark Act Section 45, 15 U.S.C. § 1127. “Use” of a
mark for purposes of abandonment “means the bona fide use of a mark made in the
ordinary course of trade.” Id. If a registered mark is no longer used, it is subject to
cancellation under Trademark Act Section 14, 15 U.S.C. § 1064(3). The rationale for
this oft-stated equitable principle is that it is within the public interest to have marks
stricken from the register that are no longer in use, and that this interest or concern
cannot be waived by the inaction of any single person or concern no matter how long
the delay persists. See W. D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ
313, 316 (TTAB 1965), aff’d, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967); see also
Saint-Gobain Abrasives, 66 USPQ2d at 1359 (holding that the public interest favors
cancelling registrations that are void ab initio, and the defenses of laches and
acquiescence therefore are unavailable against a functionality claim).
Turning to non-use claims or a claim that a mark is not used in commerce, as
discussed, “use in commerce” means “the bona fide use of such mark made in the
ordinary course of trade.” Trademark Act Section 45, 15 U.S.C. § 1127. With respect
to services in particular, a mark is “used in commerce” “when both [1] it is used or
displayed in the sale or advertising of services and [2] the services are rendered in
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commerce.” Id; see also Christian Faith Fellowship Church v. adidas AG, 841 F.3d
986, 120 USPQ2d 1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory
use in commerce requirement). When a service mark has not been “used in commerce”
on the day the application or statement of use is filed, the registration of that mark
is void ab initio. Couture v. Playdom, 778 F.3d 1379, 113 USPQ2d 2042, 2043-44 (Fed.
Cir. 2015) (merely offering a service, without actually providing it, does not constitute
use in commerce) (internal citation omitted). When a designation that is registered
on the Supplemental Register has not been used in commerce, it is similarly subject
to cancellation under Trademark Act Section 24, 15 U.S.C. § 1092, because it is not
entitled to registration. Given the well-established public policy that supports
cancellation of registrations that are void ab initio and marks that are no longer in
use (see W. D. Byron & Sons, Inc., 146 USPQ at 316), if equitable defenses do not
apply to an abandonment claim grounded in discontinued bona fide use of a mark
made in the ordinary course of trade, then it follows that said defenses also do not
bar a claim that a mark on the Supplemental Register was never in use in commerce.
Accordingly, Respondent’s affirmative defenses of laches, acquiescence, waiver, and
equitable estoppel are stricken with respect to Petitioner’s claim of non-use in
commerce. See Fed. R. Civ. P. 12(f).
II. MOTIONS FOR SUMMARY JUDGMENT
A. LEGAL STANDARD
Summary judgment is appropriate where the movant shows the absence of any
genuine dispute as to any material fact, and that it is entitled to judgment as a matter
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of law. See Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323-
324 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987); Freki Corp. N.V. v. Pinnacle Entm’t, Inc., 126
USPQ2d 1697, 1700 (TTAB 2018). “A party asserting that a fact cannot be or is
genuinely disputed must support the assertion by (A) citing to particular parts of
materials in the record …; or (B) showing that the materials cited do not establish
the absence or presence of a genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
in favor of the non-movant. Opryland USA Inc. v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a
motion for summary judgment, the Board may not resolve any factual dispute; it may
only determine whether a genuine dispute of material fact exists. See, e.g., Meyers v.
Brooks Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055, 1056 (Fed. Cir. 1990) (“If there is
a real dispute about a material fact or factual inference, summary judgment is
inappropriate; the factual dispute should be reserved for trial”). Specifically, when
deciding a motion for summary judgment, the Board may not weigh the evidence in
an area of disputed fact or make credibility determinations. See, e.g., Lemelson v.
TRW, Inc., 760 F.2d 1254, 225 USPQ 697, 701 (Fed. Cir. 1983) (court cannot engage
in fact-finding on a motion for summary judgment); Metro. Life Ins. Co. v. Bancorp
Servs. LLC, 527 F.3d 1330, 87 USPQ2d 1140, 1146 (Fed. Cir. 2008) (when resolving
Cancellation No. 92060891

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conflicting accounts requires ruling on the weight and credibility of the evidence,
summary judgment not available). Further, the non-movant must be given the benefit
of all reasonable doubt as to whether a genuine dispute as to material facts exist, and
the evidentiary record on summary judgment and all inferences to be drawn from the
undisputed facts must be viewed in the light most favorable to the non-movant. See
Opryland, 23 USPQ2d at 1472.
Additionally, when the movant has supported its motion with sufficient evidence
that, if unopposed, indicates there is no genuine dispute of material fact and that the
moving party is entitled to judgment as a matter of law, the burden then shifts to the
nonmoving party to demonstrate the existence of a genuine dispute of material fact
to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540
(TTAB 2009). Specifically, “[t]he party opposing the motion must point to an
evidentiary conflict created on the record at least by a counter statement of a fact or
facts set forth in detail in an affidavit by a knowledgeable affiant.” Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.3d 831, 221 USPQ 561, 564
(Fed. Cir. 1984).
When each party files a motion for summary judgment, the moving party in each
motion has the burden as to its own motion, and the Board evaluates each motion on
its own merits and resolves all doubts and inferences against the party whose motion
is being considered. See Mingus Constructors, Inc. v. United States, 812 F.2d 1387,
1390-91 (Fed. Cir. 1987); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433,
1437 (TTAB 2007). The mere fact that cross-motions for summary judgment have
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been filed does not necessarily mean that there is no genuine dispute of material fact
or that a trial is unnecessary. See, e.g., Drive Trademark Holdings, 83 USPQ2d at
1437; Univ. Book Store v. Univ. of Wis. Board of Regents, 33 USPQ2d 1385, 1389
(TTAB 1994).
B. ANALYSIS
• Standing
Standing is a threshold issue that must be proven in every inter partes case. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) (“The facts regarding standing . . . must be affirmatively proved. Accordingly,
[plaintiff] is not entitled to standing solely because of the allegations in its
[pleading].”). “A petitioner is authorized by statute to seek cancellation of a mark
where it has ‘both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis
for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v.
Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999)). As mentioned supra, Petitioner submitted
copies of printouts from the USPTO TESS database showing the status and title of
its pleaded registrations, that the registrations are valid and subsisting and that they
are owned by Petitioner (14 TTABVUE 11-27). In view thereof, there is no genuine
dispute that Petitioner has a real interest and a reasonable basis to bring this
proceeding. See Lipton Indus., Inc. v. Ralston Purina Co., 213 USPQ at 189;
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
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2000) (petitioner’s prior registrations establish “direct commercial interest and its
standing to petition for cancellation”).
• Parties’ Arguments and Evidence on Non-Use in Commerce Claim
Petitioner argues that Respondent does not actually render services to others. In
support thereof, Petitioner has submitted the declaration of Thad Dilley, Acting
Director for Brand Shipping for Petitioner (Exh. 22, 32 TTABVUE 394). Based on Mr.
Dilley’s analysis of a webpage shown in a document provided by Respondent
(identified as “ePostal 00590”; Exh. 21 to Petitioner’s motion, 32 TTABVUE 392),
which is a screen shot of a webpage on Respondent’s website,7 and other pages on
Respondent’s website, Petitioner contends that none of the links on Respondent’s
website, which purport to allow consumers access to Respondent’s services, actually
work. Mr. Dilley states, “at no time did any of the webpages I visited include a link
that enabled me to download or access any email forwarding services of any kind”
(Dilley dec. ¶¶ 7, 8 and 13; 32 TTABVUE 395-97). Specifically, Mr. Dilley explains
that after clicking several links, he was ultimately redirected back to the start page
or to another page, without being able to download or access any email forwarding
services (Id., ¶¶ 3-12). Additionally, Petitioner points out that although Respondent
stated that it has been “offering customers, free of charge, the ability to set up their
accounts and use basic services since 2015” (32 TTABVUE 376), Respondent refused
to respond to Petitioner’s interrogatory in which Petitioner requested Respondent to

7 The printout is dated August 4, 2017, and was retrieved from the address
http://www.epostalservices.com/get_started.aspx, which page is entitled “Get Started with
ePostal.”
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identify “for each year from 2005 through 2015,” the total number of new, unique
customers who used or otherwise accessed, whether purchased or not, the services
provided under the [registered] Mark” (32 TTABVUE 402-03).
Respondent does not respond to Petitioner’s evidence that Respondent’s website
comprises numerous links which only function to redirect the potential customer to
other pages on the website, rather than enabling the user to purchase and/or use
Respondent’s identified services. Instead, Respondent merely points to Gardner
declaration Exhibits 1 and 2 submitted with Respondent’s summary judgment motion
(see Gardner dec., ¶ 2, Exh. 1 and 2; 30 TTABVUE 281, 288-360, 361-379) to
demonstrate that Respondent’s “mark is in fact being used to distinguish and identify
the source of [its] services” (35 TTABVUE 13). Respondent also argues that it has
provided “many examples” of how its services actually work, that Respondent’s
website is not the only place it uses its mark, and that Respondent “uses its mark in
marketing presentations, informational flyers, and other physical marketing
materials” (Id.).
In reply, Petitioner points out that Respondent did not dispute the averments
made by Mr. Dilley in his declaration or submit evidence to the contrary. Petitioner
also emphasizes that none of the screen shots provided by Respondent as exhibits to
the Gardener declaration show that its services are actually available to the public.
• Decision
In interpreting Section 45 of the Trademark Act, 15 U.S.C. § 1127, our primary
reviewing court has stated that “[f]or service marks, the ‘use in commerce’
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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.’ The registration of a mark that does not meet the use requirement is
void ab initio.” Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301,
1305 (Fed. Cir. 2009) (internal citations omitted). Additionally, “an applicant’s
preparations to use a mark in commerce are insufficient to constitute use in
commerce. Rather, the mark must be actually used in conjunction with the services
described in the application for the mark.” Id. at 1308 (internal citation omitted).
Likewise, a service mark must be in use in commerce in order to maintain a
registration. Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899,
1905 (TTAB 2006) (citing Trademark Act Sections 8 and 9, 15 U.S.C. §§ 1058 and
1059).
Petitioner submitted the declaration of Mr. Dilley, which establishes that
Respondent’s services are not available to third parties. Respondent has neither
responded directly to Mr. Dilley’s declaration, nor submitted additional responsive
evidence to substantiate Mr. Gardner’s conclusory averments that Respondent “has
continuously and exclusively used Registrant’s Mark in commerce since at least as
early as September 2006 in connection with its premium email services” and “has
used and uses Registrant’s Mark in conjunction with the offer for sale of its services
on its website, in its marketing materials, and during customer and marketing
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16
presentations” (Gardner dec. ¶ 6, 30 TTABVUE 282). More importantly, Respondent’s
averments regarding its website uses, marketing materials, and other marketing
activities relate only to the offering of Respondent’s services, but not to the rendering
of those services.8 As explained above, to be considered used in commerce for
registration purposes, not only must the mark be used or displayed in the sale or
advertising of the services, the services must be actually rendered. Petitioner has
shown through the Dilley declaration that there were no services rendered at the time
the declarant reviewed Respondent’s website, and through Respondent’s silence as to
any customers, other than its own president which does not fulfill the “rendered”
requirement for use in commerce, there are no customers, meaning the services have
not been rendered. Rather than providing evidence that services have indeed been
rendered to customers, Respondent remains silent on that point and continues to
point to its use of the mark in advertising/offering its services on its website and in
other locations. Finally, Respondent’s services identified in the registration are
explicitly limited to “fee-based” services and there is no evidence that Respondent

8 We also note Respondent’s response to Petitioner’s interrogatory no. 39 (also identified by
Respondent as “no. 74”), which was submitted by Respondent and is mentioned in
Respondent’s response to Petitioner’s motion. See Trademark Rule 2.127(e)(2), 37 C.F.R.
§ 2.127(e)(2) (for purposes of summary judgment only, the Board will consider an
interrogatory and answer thereto along with any exhibit made part of the answer if a copy is
provided with the party’s brief on the summary judgment motion). In its response to that
interrogatory, Respondent explains that “Registrant speaks with each customer on an
individual and personal basis to better learn their needs and how best to assist the customer.
Registrant . . . sends potential consumers its marketing materials via email and then
discusses those materials as well as the website” (31 TTABVUE 434). This response relates
only to Respondent’s offering of its services.

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17
assesses fees for its services.9 Specifically, Respondent’s website pages show that the
cost to send “Eps eLetters” is zero dollars (“$0.00”) (30 TTABVUE 297, 298). In that
regard, we note that while Respondent acknowledges that its president was “the first
person to use [Registrant’s] services,” Respondent never states that it has ever had
other customers. Respondent only states that acknowledging its president was its
“first customer” “in no way implies, or is meant to imply, that [the president] was the
only person to use the services over the past decade” (35 TTABVUE 14). Respondent
never affirmatively asserted, in response to Petitioner’s discovery requests or this
motion for summary judgment, that it has rendered its fee-based email forwarding
services via the internet to any customer and Respondent did not submit any
testimony or any documentation showing that it ever has had customers for those
services, whether for fees or free-of-charge. Thus, Respondent has not submitted
either a counterstatement of facts set forth in detail in an affidavit by a
knowledgeable affiant (see Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (internal citation omitted)) or any
additional evidence to demonstrate that an evidentiary conflict exists as to whether
Respondent has ever rendered its identified services in commerce, i.e.,
“telecommunication services, namely, fee-based email forwarding services via the

9 Generally, it is not required to receive payment for services in order to establish use of a
service mark in connection with services. See Am. Exp. Marketing & Development Corp. v.
Gilad Development Corp., 94 USPQ2d 1294 n.3, 1299 (TTAB 2010) (citing Capital Speakers,
Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1035 n.3 (TTAB
1996) (“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, normally, a
for-profit sale is not required.”). However, in this case, the identification of services in
Respondent’s registration specifies “fee-based” services.
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18
internet,” in connection with the involved mark. In view thereof, we find that
Petitioner has established the absence of any genuine dispute as to any material fact
on its claim that Respondent has not used its registered mark in commerce in
connection with the services recited in the registration and that it is entitled to
judgment as a matter of law on its claim. Accordingly, Petitioner’s motion for
summary judgment on its non-use in commerce claim is GRANTED.
IV. PETITIONER’S OTHER CLAIMS
Having determined that Petitioner is entitled to prevail in this proceeding based
upon its non-use in commerce claim, we need not reach Petitioner’s remaining claims
or Respondent’s defenses thereto discussed in the parties’ respective summary
judgment motions. See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171
(TTAB 2013) (the Board’s determination of registrability does not require, in every
instance, decision on every pleaded claim); see also City Nat’l Bank v. OPGI Mgmt.
GP Inc./Gestion OPGI Inc., 106 USPQ2d at 1679 n.23 (because registration at issue
is cancelled on ground of abandonment, no need to reach second ground involving
alleged lack of bona fide intent to use the applied-for mark at the time the application
was filed); Am. Paging Inc. v. Am. Mobilphone Inc., 13 USPQ2d 2036, 2039 (TTAB
1989), aff’d unpublished, 932 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) (“Having
determined that petitioner is entitled to the relief it seeks based upon its claim
pursuant to Section 2(d) of the Lanham Act, we need not address petitioner’s claim
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19
that registrant has abandoned its rights in the mark AMERICAN MOBILPHONE
PAGING and design.”).
V. SUMMARY
Because we find, based on the record herein and applicable law, that there are no
genuine disputes of material fact as to Petitioner’s standing and its claim of non-use
in commerce, that Petitioner is entitled to judgment on that claim as a matter of law,
and that Respondent’s equitable defenses are unavailable against Petitioner’s non-
use in commerce claim, Petitioner’s motion for summary judgment on that claim is
hereby GRANTED, and Respondent’s motion for summary judgment on its equitable
defenses of laches and equitable estoppel is DENIED. Accordingly, judgment is
hereby entered against Respondent, the petition to cancel is granted, and
Registration No. 3750820 will be cancelled in due course.
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