Service Mark Registration Deemed Void Ab Initio More than 30 Years After Registration
In the late 1940s, William Aycock conceived of and began developing a service that would allow solo passengers to arrange flights on chartered aircraft because at the time, the common practice was for air taxi companies to lease entire airplanes rather than individual seats. Aycock's service would act as the communication link between customers and the air taxi service operators he contracted with to provide flights on an individual seat basis. Aycock planned to advertise his service under the mark AIRFLITE and have those interested in the service call a toll-free number to schedule reservations.
Aycock believed that in order for the AIRFLITE service to become operational, he would need at least 300 air taxi operators in the United States to participate in his air taxi operator network. In March 1970, Aycock distributed fliers containing in-depth information about his AIRFLITE service to virtually all air taxi operators certified by the FAA and invited them to join his service. Some of these air taxi operators agreed to participate in the AIRFLITE service and entered into contracts with Aycock, paying "modest initiation fees" to him.
In August 1970, Aycock filed an application to register the AIRFLITE service mark. Although there apparently was significant back-and-forth between Aycock and the examining attorney, the final description of services approved by the PTO for the AIRFLITE mark was "[a]rranging for individual reservations for flights on airplanes." The AIRFLITE mark was registered on April 30, 1974, on the Supplemental Register and his application to renew the mark was granted by the PTO in April 1994.
In 2001, Airflite, Inc. filed a petition for cancellation of Aycock's AIRFLITE service mark registration alleging in part that Aycock did not use the mark prior to registration in connection with the services identified in the registration. The TTAB agreed with the petitioner and issued an opinion in October 2007 canceling the AIRFLITE registration.
The Federal Circuit, with one judge dissenting, affirmed the TTAB's decision, concluding that Aycock's AIRFLITE service mark application (and therefore the resulting registration) was "void ab initio" because it did not meet the use requirement when he filed it more than 30 years ago in 1970. Specifically, the Court concluded that, given the description of services in the registration (characterized by the Court as "the arranging of flights between an air taxi operator and a passenger"), Aycock's use of the mark in contracting with the air taxi operators was not sufficient "use in commerce" to support the registration. Rather, the Court concluded that such actions were merely "preparations to use" the mark in commerce. In order to establish the necessary "use in commerce," the Court stated that he "had to develop his company to the point where he made an open and notorious public offering of his AIRFLITE service to intended customers" but the evidence did not support such a finding.
In a sympathetic dissent, Federal Circuit Judge Newman characterized the cancellation of the registration after 35 years as "seriously flawed" and "seriously unjust." The dissent argued in part that--given the prosecution history, which involved extensive exchanges between Aycock and the examiner regarding the description of services--it would be "unfair to penalize the applicant for flaws for which there was at least a shared responsibility." Rather, the dissent argued that the appropriate remedy should be clarification and correction of any perceived flaw in the registration not cancellation after 35 years.
The Federal Circuit's opinion, including dissent, in Aycock Engineering, Inc. v. Airflite, Inc., can be found here (PDF, 29 pages). You can also find the TTAB's opinion in the case here (PDF, 18 pages).
