Lyons v. American College of Veterinary Sports Medicine & Rehabilitation
2017 U.S. App. LEXIS 10168
Fed. Cir.2017Background
- Lyons, an equine veterinarian, joined an organizing committee (1999–2004) formed to create an AVMA‑accredited veterinary specialty organization (VSO) named "American College of Veterinary Sports Medicine and Rehabilitation." Lyons drafted the committee's letter of intent, proposed bylaws, and articles of incorporation.
- Lyons was dismissed from the organizing committee in July 2004.
- Lyons applied to register THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION on the Principal Register, later amended to the Supplemental Register; registration issued in May 2006. Lyons claimed first use as early as 1995 in a fundraising document called "The Equine Excellence Initiative."
- The organizing committee (led by Gillette) completed the AVMA petition, secured provisional recognition in 2010, incorporated the College in 2011, began certifying diplomates, established residency programs, and ran conferences and education programs.
- The College petitioned to cancel Lyons’s Supplemental Register registration (2011). The TTAB found Lyons never owned the mark, ruled her application void ab initio, and cancelled registration; the Federal Circuit affirmed, concluding Lyons’s use was at most de minimis and the College had priority/use in commerce.
Issues
| Issue | Plaintiff's Argument (Lyons) | Defendant's Argument (College) | Held |
|---|---|---|---|
| Who owns the mark / priority of use in commerce | Lyons: she first used the mark in 1995 (Equine Excellence Initiative) and continuously used it in commerce for educational services, fundraising, materials, and certification. | College: Lyons’s early use was preparatory/de minimis, not use in commerce; the organizing committee and later the College used the mark in commerce and the public associates the mark with the College. | Held for College: Lyons’s use did not meet the use‑in‑commerce standard; College owned the mark and Lyons’s application was void ab initio. |
| Whether preparatory publications constitute "use in commerce" | Lyons: publication/dissemination of her initiative and fundraising under the mark constituted use. | College: mere future‑tense plans and limited dissemination do not satisfy advertising + actual service rendition required by §1127. | Held for College: preparatory materials and future plans are insufficient; advertising/use must relate to services actually rendered. |
| Public association and quality control | Lyons: claims she promoted and raised funds under the mark, supporting public association. | College: the public (AVMA community) associates the mark with the College because it certifies specialists, runs residencies, and is listed on AVMA resources; Lyons has no students, certifications, or AVMA accreditation. | Held for College: evidence shows public looks to the College for services and quality assurance under the mark. |
Key Cases Cited
- Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312 (C.C.P.A. 1976) (ownership of a mark is acquired by use, not by registration)
- Application of Deister Concentrator Co., 289 F.2d 496 (C.C.P.A. 1961) (registration is only evidence of ownership; one must be owner before registering)
- Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) (use‑in‑commerce requirement applies to service marks; advertising must relate to services actually rendered)
- In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999) (standards of review for Board legal conclusions)
- On‑Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (substantial‑evidence standard for reviewing TTAB factual findings)