Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PARAMOUNT PICTURES CORPORATION
JAMES E. WHITE DBA R.I. PRODUCTIONS
Opposition No. 90,130
May 5, 1994
Before Sams, Rice, and Hohein
Administrative Trademark Judges
Opinion by Rice
Administrative Trademark Judge
This case now comes up on opposer's motion, filed August 31, 1993, for summary judgment. Both parties have briefed the motion.
We begin with some background information concerning this case. An application was filed by James E. White, dba R.I. Productions, to register the mark THE ROMULANS for "parlor games namely connect the dots game sets." [FN1]
Registration was opposed by Paramount Pictures Corporation on the grounds that for many years, opposer has been engaged in the business of producing audiovisual entertainment programs in various media, primarily motion pictures and television; that among the audiovisual entertainment programs produced by opposer are the well-known television programs "Star Trek" and "Star Trek: The Next Generation" and the motion pictures "Star Trek The Movie I-IV" (referred to collectively by opposer as the "Productions"); that opposer coined the term ROMULANS to refer to an alien enemy race of space creatures; that from the inception of the Productions in 1966 to the present, opposer has featured ROMULANS prominently and continuously in the Productions, in novelizations of the Productions, and in other printed matter and audiotapes based on the Productions; that as a result of the extensive exposure and popularity of the Productions (and of the printed matter and audiotapes based thereon), the general public associates the term ROMULANS with opposer's Productions, the merchandise rights to which are owned by opposer; that commencing prior to February 1, 1983, applicant's claimed date of first use in commerce, opposer has licensed others to use the term ROMULANS, and/or formatives including the terms ROMULAN or ROMULANS, on or in connection with various goods, including toys and games, the nature and quality of which are controlled by opposer; that applicant's mark, as applied to his goods, so resembles opposer's mark as to be likely to cause confusion, or to cause mistake, or to deceive; that applicant's mark, as applied to his goods, falsely suggests a connection with opposer; and that upon information and belief, applicant has not made a bona fide commercial use of his mark in the United States.
Applicant, in his answer to the notice of opposition, in essence denied the salient allegations contained therein. In addition, applicant asserted affirmatively, inter alia, that in a prior proceeding between the parties [Opposition No. 70,144], opposer opposed an application by applicant for registration of the mark THE ROMULANS for entertainment services, namely, live and recorded performances by a vocal and instrumental group; that the Board determined that opposition in applicant's favor [Paramount Pictures Corp. v. Romulan Invasions, 7 U.S.P.Q.2d 1897 (TTAB1988) ]; [FN2] that the application which was the subject of that opposition matured into Registration No. 1,510,444 issued October 25, 1988; [FN3] that it is therefore applicant, not opposer, who is the owner of the mark THE ROMULANS; that opposer has never used ROMULANS as a trademark; that opposer has no right to use the mark without applicant's permission; and that opposer is guilty of trademark infringement and unfair competition.
*2 We turn now to opposer's motion for summary judgment. In its motion, opposer seeks summary judgment, sustaining the opposition and denying registration to applicant, on the ground that the mark sought to be registered is not a trademark which identifies applicant's specified goods ("parlor games namely connect the dots game sets"), and on the ground that there has been no bona fide use of the mark in the ordinary course of trade.
Specifically, opposer maintains that applicant's purported game is not a bona fide game but rather is an advertising flier that is distributed by applicant to promote his band; that accordingly, the purported game is not a "good"; that since there is no good to be identified, there is no trademark; that furthermore, applicant has failed to make a bona fide commercial use of the mark in connection with the purported game; that Section 45 of the Lanham Act, 15 U.S.C. 1127, as amended in 1989, defines "use in commerce" (required by the Act for purposes of obtaining a trademark registration) as "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in the mark"; that applicant's use is insufficient for purposes of registration even under the more lenient standard of use applied prior to the amendment of Section 45; that applicant distributes the purported game not as a way to build a trade in games, but rather to promote his band; and that the facts show that applicant is not in the game business and does not have a real trade in the purported game. In addition, opposer cites The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 Trademark Rep. 375, 395 (1987), which indicates that the amended Lanham Act "use in commerce" standard (i.e., "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in the mark") "contemplates commercial use of the type which is common to a particular industry."
In support of its motion for summary judgment, opposer has submitted a discovery deposition, with exhibits, which it took of applicant on July 10, 1993. What follows is a summary of certain undisputed facts found in the deposition.
Applicant is an individual who drives a truck by day. By night, applicant takes college courses, and is the principal member of, and the songwriter for, a rock-and-roll musical band called "The Romulans." The band, which was formed in 1982, performs, infrequently, at concerts and parties, and has also made two video and at least three tape recordings of its music. Applicant testified, with respect to the band, that he "owns everything" and is "in charge of everything." Applicant has advertised the band and its recordings in rock-and-roll magazines, and has sent copies of the band's tapes to radio stations. Applicant testified that he has also promoted the band through the distribution of fliers. Repeatedly during his deposition, applicant identified his connect-the-dot game as one such flier, i.e., as a promotional piece for the band. Some of the more pertinent portions of applicant's deposition are quoted below:
A. Well, I have certainly given away the games at various shows, including our own ... [dep. page 31]
Q. Going back to the fliers, how many different fliers have you distributed in connection with your band?
A. Probably about three or four.
Q. Barricaded Suspects being one of them?
Q. What were the other two or three?
A. Well, the games, that I gave the games.
Q. So you consider the games a flier as you are using the term "fliers"?
A. Yes, it is part of a flier. [dep. page 34]
Q. Is the answer, I am looking at document number 50, does the game player receive document 50 as it appears, in other words, the answer is already given?
Q. So really there is no challenge to the game, they already have the answer before they get to the game?
Q. What was the intent behind developing this particular game?
A. Well, just to promote the band. I thought it was an original idea. [dep. pages 60-61]
Q. When you hand out or sell a game set, what is your expectation as to what the individual receiving it understands why they are receiving it, what it is about?
A. It is about promoting the band. [dep. page 71]
Q. And do you recall when you first started advertising the game?
A. When I started advertising the game?
A. With our flier--well, the flier is--the game is the flier, which is the advertisement. [dep. page 74]
Q. How does the copyright certificate, documents 53 and 54, relate to your use of The Romulans on game sets?
A. Well, they don't. This is out of context.
Q. How does it relate in context?
A. Well, it--this is my sheet music and this is--you know, the music is the band. And I use the fliers to promote the band. [dep. page 88]
Applicant's connect-the-dot game, which was created in 1982, consists of three photocopied pages, on letter-size paper, stapled together; there is no packaging for the game. The first page of the game bears instructions for playing the game, promotional matter concerning available merchandise, the name and address of the band, and the mark THE ROMULANS together with a design mark consisting of three overlapping triangles. The second page is the connect-the-dot game. The third page, which is visible through the second page, bears the triangle design (i.e., the "solution" to the game) presented in the same size as the connect-the-dot game, and the mark THE ROMULANS. Reproduced below, in reduced size, are copies of the three pages of the game (the numbers 000050, 000051, and 000052 are not part of the game but rather are document numbers applied for this proceeding):
*4 Since 1982, when applicant created the connect-the-dot game, the game has been distributed at performances by applicant's band, at performances by other groups, through the mail, and to applicant's friends. Sometimes copies of the game have been given away, and sometimes they have been sold, depending upon whether applicant is in a good mood or not. When the games are sold, they are sold "mostly just for the cost." Applicant testified that he used to give away about 100 or more games a year, but that he does not do that anymore; that in a typical year, he sells about 20 or 25 games; that in 1992 he gave away about 20 games and sold about 10; that in 1993, up to the July 30, 1993 date of the deposition, he had given away 10 or 20 games and sold about 5; and that total sales of the game for the period 1982 to July 30, 1993 amounted to at least 200 games. When the games are sold, they are sold for 25¢, 50¢, or, in a few recent cases, $1.00. Whenever anyone orders one of the band's tapes by mail, applicant sends along a free copy of the game. When applicant needs to make more copies of the game, he uses a local coin-operated photocopy machine. Applicant has no separate business office, and no employees.
In addition to the video cassettes, tape cassettes, and games, applicant sells T-shirts bearing the band's logo. The total annual income from the band's live performances (for which the band is paid between $25 and $100) and related products runs between $200 and $300; total annual promotional expenses run around $5,200. In recent years, the band has performed only once or twice a year. The annual income from the band's activities is used by applicant to promote the band; individual band members receive no pay. A reference to applicant's game appeared, along with references to the video and tape cassettes, in one advertisement which ran in Parts one and two of the July 1992 issue of "MAXIMUM ROCKNROLL" magazine (five months prior to the commencement of this proceeding). The reference to the game reads "THE ROMULANS Game set $1.00."
Applicant, in his response to opposer's motion for summary judgment, asserts that opposer is using the motion as an excuse for not responding to applicant's interrogatories; [FN4] that applicant believes opposer's answers to these interrogatories will reveal opposer's knowing and willful infringement of applicant's mark and unfair business tactics against applicant; [FN5] that opposer has not yet proved that it is in the game business, nor has opposer provided any evidence that it has any legitimate or rightful claim to the trademark THE ROMULANS; that applicant's game represents applicant's birth into the game business and is one product of many identified by the mark THE ROMULANS; that applicant advertises his game as a separate item along with his tapes and T-shirts; that the mark THE ROMULANS appears on both the front and back of the T-shirt, which (like applicant's game) is a separate good for sale that by its very nature promotes applicant's musical group; and that this was what applicant, who is not represented by counsel herein, meant when he answered opposer's deposition questions relating to the game.
*5 The summary judgment motion is a pretrial device to dispose of cases in which "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." See: FRCP 56(c); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed.Cir.1987); and Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984). The moving party has the burden of demonstrating, prima facie, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law. See: Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 U.S.P.Q.2d 1295 (Fed.Cir.1991), and Scripps Clinic & Research Foundation v. Genentech Inc., 927 F.2d 1565, 18 U.S.P.Q.2d 1001 (Fed.Cir.1991). All doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party, and all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See: Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed.Cir.1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542 (Fed.Cir.1992); and Flatley v. Trump, 11 U.S.P.Q.2d 1284 (TTAB1989).
We turn to the first ground on which opposer seeks summary judgment, namely, that applicant's purported game is not a bona fide game but rather is an advertising flier for applicant's band, and thus there is no use by applicant of "THE ROMULANS" as a trademark for goods in the nature of "parlor games namely connect the dots game sets."
We start by noting that a party may not obtain summary judgment on an issue which has not been pleaded. See: FRCP 56(a) and 56(b); Consolidated Foods Corp. v. Berkshire Handkerchief Co., Inc., 229 USPQ 619 (TTAB 1986); and Genesco, Inc. v. Levi Strauss & Co., 219 USPQ 1205 (TTAB 1983), affirmed, 742 F.2d 1401, 222 USPQ 939 (Fed.Cir.1984). Here, the asserted failure by applicant to use his mark on "goods in trade" in the nature of games was not specifically pleaded by opposer as a separate ground for opposition. However, opposer did allege that applicant had not made bona fide commercial use of his mark in commerce. This pleading could well be construed to comprehend the "no use on goods in trade" ground. Moreover, applicant has not objected to opposer's motion for summary judgment as being based, in part, on an unpleaded issue, but rather has treated the issue on its merits. Accordingly, to the extent that it may be necessary to do so, we deem opposer's pleading to be amended, by agreement of the parties, to assert this issue. See: Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984), and Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977).
*6 Turning to the merits of opposer's motion for summary judgment on this issue, Section 1(a) of the Act, 15 U.S.C. 1051, permits registration of a trademark "used in commerce." Section 45 of the Act, 15 U.S.C. 1127, states, in pertinent part, that the term "trademark" includes any word, name, symbol, or device, or any combination thereof used by a person "to identify his or her goods." The same section indicates that a mark shall be deemed to be in use in commerce on goods when "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, ... and the goods are sold or transported in commerce." Thus, a necessary prerequisite to the establishment of rights in, and registration of, a term as a trademark is that the subject matter to which the term is applied must be goods. See: Gay Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722 (CCPA 1978), and In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (CCPA 1974).
In the present case, we note that applicant's flier/game is not clearly labeled as a game; that it consists merely of three photocopied pages, stapled together, without any packaging; that it serves to promote applicant's band and related products; that there is no real substance or entertainment value to the purported game, because the instructions specify that the design to be created by connecting the dots is the band's triangle design logo, and because the "solution," i.e., the complete triangle design, appears both beneath the instructions and on the third page, which is immediately under, and is visible through, the connect-the-dot page; that the game instructions [FN6] are not serious or genuine in nature, because there is nothing to figure out, and because the stated average completion time is fanciful; [FN7] that the flier/game has been distributed primarily as a give-away; that despite the fact that the "game" was created in 1982, the record shows only one advertisement, in July 1992, which makes reference to a game; and that applicant himself, in his deposition, repeatedly referred to it as a flier or promotional piece. We hasten to add that the mere fact that a collateral product serves the purpose of promoting a party's primary goods or services does not necessarily mean that the collateral product is not a good in trade, where it is readily recognizable as a product of its type (as would be the case with T-shirts, for example), and is sold or transported in commerce. See, for example: In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point pens which are used to promote applicant's tools, but which possess utilitarian function and purpose, and have been sold to applicant's franchised dealers and transported in commerce under mark, constitute goods in trade], and In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) [calendar which is used as advertising device to promote applicant's plastic film, but which possesses, in and of itself, a utilitarian function and purpose, and has been regularly distributed in commerce for several years, constitutes goods in trade]. Here, however, we simply do not believe that applicant's purported game is readily recognizable as a game, nor does it appear to have any real utilitarian function and purpose as a game.
*7 Further, even assuming arguendo that the advertising flier is a game, we agree with opposer, based on the undisputed facts, that applicant has failed to make a bona fide use of his mark, in the ordinary course of trade, in connection therewith.
Prior to November 16, 1989 (the effective date of The Trademark Law Revision Act, Public Law 100-667, enacted November 16, 1988), the definition of the term "use in commerce" specified in Section 45 of the Lanham Act read, in pertinent part, as follows:
Use in commerce. For the purposes of this Act a mark shall be deemed to be used in commerce (a) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce....
Under this standard, a single (i.e., "token") sale or shipment of a product under a mark was sufficient to lay a foundation for registration provided that this initial transaction was bona fide in nature, and was followed by activities indicating a continuing effort to place the product on the market on a commercial scale within a reasonable time. See: Fort Howard Paper Co. v. Kimberly-Clark Corp., 390 F.2d 1015, 157 USPQ 55 (CCPA 1968); General Mills Inc. v. Health Valley Foods, 24 U.S.P.Q.2d 1270 (TTAB 1992); Times Mirror Magazines, Inc. v. Sutcliff, 205 USPQ 656 (TTAB 1979); and La Maur Inc. v. International Pharmaceutical Corp., 199 USPQ 612 (TTAB 1978). However, even under this lenient standard, trademark rights were not created by sporadic, casual, and nominal shipments of goods bearing a mark. Rather, there had to be a trade in the goods sold under the mark, or at least an active and public attempt to establish such a trade, in order for a trademark (and registrable rights) to exist. See: Gumpert Co., Inc. v. ITT Continental Baking Co., 191 USPQ 409 (TTAB 1976); Bellanca Aircraft Corp. v. Bellanca Aircraft Engineering, Inc., 190 USPQ 158 (TTAB 1976); and Clairol Inc. v. Holland Hall Products, Inc., 165 USPQ 214 (TTAB 1970).
The Trademark Law Revision Act amended the definition of "use in commerce" by, inter alia, adding the following initial sentence thereto:
The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.
The legislative history of The Trademark Law Revision Act reveals that the purpose of the amendment was to eliminate "token use" as a basis for registration, and that the new, stricter standard contemplates instead commercial use of the type common to the particular industry in question. [FN8]
Inasmuch as applicant's application was filed on August 6, 1991, long after the effective date of The Trademark Law Revision Act, it is the amended definition of "use in commerce" which governs this case. Applicant's use, as revealed by the undisputed facts, simply does not rise to the level of "bona fide use of a mark in the ordinary course of trade." In this regard, we note again that applicant's flier/game is not readily recognizable as a game, nor does it appear to have any real utilitarian function and purpose as a game; that there is no packaging for the purported game; that the flier/game is distributed only through applicant personally; that it is distributed by applicant for the purpose of promoting his band, not for the purpose of establishing a trade in games; that the flier/game is either given away or sold at cost, depending upon applicant's mood, with the majority having been given away; that the volume of distribution of the flier/game over the years has been de minimis, particularly in recent years; that advertising for the game has also been de minimis, and only within the context of promoting the band; and that applicant has no separate business office and no employees. In short, despite the passage of more than 10 years since his asserted first use of THE ROMULANS on the flier/game, applicant has never marketed the flier/game on a commercial scale, nor has he made any effort to do so; applicant has no real trade in games. [FN9]
*8 Notwithstanding the foregoing, in order to prevail in a proceeding such as this, an opposer must establish not only that it has a valid ground for opposition, but also that it has standing to be heard thereon, i.e., that it has a real interest in the case, beyond that of the general public. See, for example: Consolidated Foods Corp. v. Berkshire Handkerchief Co., Inc., 229 USPQ 619 (TTAB 1986). Opposer's motion for summary judgment contains no evidence bearing on its standing to be heard on the issues which are the subject matter of the motion.
Accordingly, opposer is allowed until June 7, 1994 in which to submit a showing that there is no genuine issue of material fact as to its standing, and that it is entitled to judgment on the question of its standing as a matter of law. Applicant, in turn, is allowed until June 27, 1994 in which to file a response thereto. If opposer's showing is sufficient to establish its entitlement to summary judgment on the issue of its standing, the motion for summary judgment will be granted as to opposer's standing, and as to the two grounds asserted as the basis for the motion. If opposer's showing is not sufficient for the purpose, the motion for summary judgment will be denied; proceedings herein will be resumed; trial dates, beginning with opposer's testimony period, will be reset; and opposer's time to respond to applicant's outstanding discovery requests will also be reset.
Proceedings herein remain suspended, except as indicated above.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/192,222, filed August 6, 1991, with claimed dates of first use and first use in commerce of May 1, 1982 and February 1, 1983, respectively.
FN2. Applicant testified, at pages 20-22 and 78-79 of the discovery deposition which opposer took of him and then submitted in support of its motion for summary judgment, that Romulan Invasions, Inc. (or Romulan Invasions) and R.I. Productions are both names under which he does business, and that neither is actually a corporation.
FN3. The dates of use asserted in the registration are the same as those asserted in the present application, i.e., first use on May 1, 1982, and first use in commerce on February 1, 1983 (White deposition, page 114).
FN4. Applicant does not, however, contend that he needs discovery in order to respond to the motion for summary judgment. Indeed, the facts upon which the motion is grounded are peculiarly within applicant's knowledge.
FN6. The game instructions read as follows:
Connect the dots to form the Pyramid Triangles of THE ROMULANS logo. A to K is the circumference of the Pyramid Triangles. Try to figure the rest. Average time to complete game is approximately 15 minutes.
FN7. The instructions state that the average time to complete the game is approximately 15 minutes. When questioned about this, applicant testified, at page 51 of his deposition, as follows:
Q. On your instructions it says a game should take approximately 15 minutes to complete. How do you come up with 15 minutes for this?
A. Real slow people.
Q. Is that typical of your fans?
A. No. I am sure people--I just put 15 minutes. Hopefully, they enjoyed looking at our logo for 15 minutes.
Q. So it is not really a matter of it is going to take 15 minutes to complete?
Q. How long do you think it would take for a normal person of normal intelligence to complete it?
A. Oh, probably two or three minutes.
FN8. An amendment very similar to that ultimately enacted was proposed by The United States Trademark Association Trademark Review Commission, whose "Report and Recommendations to USTA President and Board of Directors," supra, served as the basis for many of the provisions of The Trademark Law Revision Act. In recommending the amendment, the Commission stated, at 77 Trademark Rep. 395:
The present Section 45 definition of use in commerce encourages token use and the warehousing of marks, by requiring only that the labeled product be "sold or transported in commerce." We therefore recommend adding the italicized language:
.... The term "used in commerce" means such use made in the ordinary course of trade, commensurate with the circumstances, and not made merely to reserve a right in a mark.
We drafted this amendment to permit flexibility, and realize that it will require judicial interpretation. Although the amendment is general, it excludes sham trademark use and the unrealistic limited volume or single-product shipments now being made for purposes of establishing pre-application use. It would effectively nullify Fort Howard Paper Co. v. Kimberly-Clark Corp., and its progeny.
The proposal contemplates commercial use of the type which is common to a particular industry. However, it should also be construed to encompass various genuine but less traditional trademark uses such as those made in small-area test markets, infrequent sales of very expensive products, or ongoing shipments of a new drug to clinical investigators from a company awaiting FDA approval.
Under our proposed definition, rights in a trademark or its registration would not be lost if use of the mark were interrupted due to special circumstances excusing nonuse, absent an intent to abandon.
These themes were repeated with frequency in the United States Senate and House as the bills which ultimately culminated in The Trademark Law Revision Act wended their way through Congress. See, for example: The Trademark Law Revision Act of 1988 (The United States Trademark Association, 1989) containing the legislative history, reports, testimony, and annotated statutory text of the Act, at pages 125 ["Revision of the definition of use in commerce is one of the most far-reaching amendments contained in the bill. Proposed in the context of instituting an intent-to-use system as a means of eliminating the commercially-transparent practice of token use, the revised definition will also have a measurable affect [sic] on improving the accuracy of the register.... While the new language will require judicial interpretation, it specifically contemplates commercial use common to a particular industry and that rights would not be lost, absent an intent to abandon, if use is interrupted due to special circumstances." --from the Section-by-Section Analysis of the Senate bill, S. 1883, appearing at page S 16553 of the Congressional Record of November 19, 1987]; 196-197 ["Amendment of the definition of 'use in commerce' is one of the most far-reaching changes the legislation contains. Revised to eliminate the commercially transparent practice of token use, which becomes unnecessary with the legislation's provision for an intent-to-use application system, it will have a measurable effect on improving the accuracy of the register.... The committee intends that the revised definition of 'use in commerce' be interpreted to mean commercial use which is typical in a particular industry. Additionally, the definition should be interpreted with flexibility so as 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." --from the Senate Judiciary Committee Report on S. 1883, Senate Report No. 100-515 dated September 15, 1988]; 234 ["Under the intent-to-use application system token use becomes unnecessary and inappropriate. It is therefore important that the definition of 'use in commerce' set forth in section 45 of the Act be strengthened to eliminate the practice. The Trademark Law Revision Act does this by adding the following new sentence to the definition: 'The term "use in commerce" means use of a mark in the ordinary course of trade, commensurate with the circumstances, and not made merely to reserve a right in a mark.' Although this new language will be subject to judicial intepretation, it specifically contemplates actual commercial use common to a particular industry. Nevertheless, the language is flexible enough to encompass various genuine but less traditional trademark uses such as those made in small-area test markets, infrequent sales of very expensive products, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval. It also reflects the possibility that use may be interrupted due to special circumstances." --from the United States Trademark Association's testimony on the House bill, H.R. 4156, before the Subcommittee on Courts, Civil Liberties and the Administration of Justice of the House Judiciary Committee, on September 8, 1988]; 291 ["Section 29 also amends the definition of 'use in commerce' in Section 45, to require the bona fide use of a mark in the ordinary course of trade. While use made merely to reserve a right in a mark will not meet this standard, the Committee recognizes that the 'ordinary course of trade' varies from industry to industry. Thus, for example, it might be the ordinary course of trade for an industry that sells expensive or seasonal products to make infrequent sales. Similarly, a pharmaceutical company that markets a drug to treat a rare disease will make correspondingly few sales in the ordinary course of its trade; the company's shipment to clinical investigators during the Federal approval process will also be in it [sic] ordinary course of trade. The definition of 'use in commerce' is consistent with the Committee's intention to eliminate the practice of making a single shipment-'token use' solely for the purpose of reserving a mark."--from the House Judiciary Committee Report on H.R. 5372, House Report No. 100-1028 dated October 3, 1988]; 334 ["Two other House revised provisions that deserve special mention are the revised definitions of 'use in commerce' and 'abandonment of mark' which appear in the House-passed bill. The House amended these definitions to assure that the commercial sham of 'token use'--which becomes unnecessary under the intent-to-use application system we designed--would actually be eliminated. In doing so, however, Congress' intent that the revised definition still encompass genuine, but less traditional, trademark uses must be made clear. For example, such uses as clinical shipments of a new drug awaiting FDA approval, test marketing, or infrequent sales of large or expensive or seasonal products, reflect legitimate trademark uses in the normal course of trade and are not to be excluded by the House language." --from the remarks of Senator DeConcini on S. 1883, as revised by the House, which remarks appear at page S 16973 of the Congressional Record of October 20, 1988--these remarks explain why the phrase "commensurate with the circumstances" was removed by the House from the proposed amended definition of 'use in commerce']; and 376 ["The revised definition of 'use in commerce' is one of the most far-reaching amendments to the Lanham Act made by the Trademark Law Revision Act of 1988. Modified primarily to eliminate the practice of token use, which becomes unnecessary and inappropriate under an intent-to-use application system, it will govern the creation and maintenance of trademark rights at all stages of the registration process.... As enacted, the revised definition does not refer to a mark's use being 'commensurate with the circumstances.' These words were omitted because of House Judiciary Committee concerns that they offered a means of circumventing the amended definition's exclusion of token use as sufficient to establishing and maintaining trademark rights. Legislative history makes clear, however, that in eliminating this phrase, legitimate, but less traditional forms of trademark use (e.g., clinical shipments of drugs awaiting FDA approval, regional test marketing of goods or services, infrequent shipments of large, expensive or seasonal products) still constitute bona fide use in the ordinary course of trade."--from the United States Trademark Association's Interlineated Text, with Commentary, of the Trademark Act of 1946, as amended by Public Law 100-667]. See also: Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507, at footnote 10 (TTAB 1993) ("The revision [of the definition of 'use in commerce'] is designed to eliminate the practice of token use.").
FN9. This case clearly does not involve any kind of a "genuine, but less traditional, trademark use" (examples of which include clinical shipments of drugs awaiting FDA approval, test marketing, and infrequent sales of large or expensive or seasonal products). Nor does it involve an interrupted use due to special circumstances, with no intent to abandon. Rather, it involves a use which is de minimis and noncommercial in nature, and not made in the course of a trade in games.