Internal use avoids cancellation only if employees are consumers

In City National Bank v OPGI Management GP Inc/Gestion OPGI Inc (Cancellation 92050730, April 26 2013 [precedential]), the TTAB has considered whether the use of a mark on an internal database accessible only to employees was sufficient to avoid cancellation for non-use.

The respondent was the owner of TREASURYNET in typed character format for services described as “providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network” in Class 36 of the Nice Classification. The evidence showed that this mark was used on a database of financial information concerning the various properties owned or co-owned by the respondent or related companies. This database could be accessed only by employees, although the employees could generate reports and send them to others. The TTAB held that this was not sufficient use and ordered the cancellation of the mark. 

The TTAB distinguished cases that held that internal use was sufficient to avoid cancellation. It pointed out that, in those other cases, the employees were consumers of the service on which the mark was used. For example, in Am Int’l Reinsurance Co v Airco Inc (570 F2d 941, 197 USPQ 69, 71 (CCPA 1978)), the internal use was for the administration of annuity plans for employees and the employees were free to use outside vendors for the annuity plans. Another example was Huthwaite Inc v Sunrise Assisted Living Inc (261 F Supp 2d 502, 66 USPQ2d 1902 (ED Va 2003)), where a mark used on an internal education programme was held to be sufficient to avoid cancellation. In that case, the court found that the courses advanced or benefited the employees who could take the skills developed at the courses with them if they transferred to another company. 

The TTAB found that the use in this case was only for the benefit of the employer, and the employees were only using the database under the mark for carrying out their jobs and not for any purpose that benefited the employee. Thus, it held that the mark was not in use sufficient to avoid cancellation.

Ethan Horwitz, King & Spalding, New York