IP Law Daily, TRADEMARK- TTAB: ‘PERMITS.COM’ mark for construction services succumbs to cancellation challenge, (Aug 19, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Board finds likelihood of confusion with the nearly identical PERMIT.COM mark with established priority for related services to similar consumer classes.

In a precedential ruling, the Trademark Trial and Appeal Board (TTAB) cancelled the registration of the standard character mark PERMITS.COM for software services held by Fieldvine, Inc. The decision came in response to a cancellation petition filed by State Permits, Inc. The Board determined that there was a likelihood of confusion between Fieldvine’s PERMITS.COM mark and the petitioner’s PERMIT.COM mark with established priority of use in commerce (State Permits, Inc. v. Fieldvine, Inc. Cancellation No. 92075095 (T.T.A.B. Aug. 15, 2024)).

Background. Fieldvine’s PERMITS.COM mark was registered on the Supplemental Register for software as a service (SAAS) products for digitizing forms, code compliance, and municipal planning in construction under International Class 42. State Permits filed this cancellation petition arguing that it had been using the mark PERMIT.COM since at least 2013, which predates Fieldvine’s first use of PERMITS.COM. State Permits also claimed ownership of two pending applications for the registration of PERMIT.COM (one as a word mark and one as a word and design mark) in International Class 45.

Petitioner's evidentiary objections: State Permits raised several objections to the evidence submitted by Fieldvine, arguing that certain documents and testimony lacked proper foundation, were irrelevant, or were improperly authenticated. Specifically, State Permits objected to the introduction of evidence from the Internet Archive’s Wayback Machine and certain testimonial declarations, citing issues with the timeliness and relevance of these submissions.

Respondent's evidentiary objections: Fieldvine responded by raising its own evidentiary objections, mainly targeting the timeliness and relevancy of the testimonial declarations submitted by State Permits, Inc. Fieldvine contended that many of the declarations were executed outside of the designated trial period and, therefore, should not be considered. Fieldvine also challenged the probative value of certain depositions, and the authenticity of documents introduced by the petitioner.

Entitlement. The TTAB found that State Permits was entitled to bring the cancellation action under the Trademark Act, as it demonstrated a genuine interest in the proceedings and a reasonable belief of damage.

Likelihood of Confusion: The Board relied on the factors outlined in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) to determine whether the concurrent use of the marks PERMIT.COM and PERMITS.COM in commerce would likely cause confusion among consumers. The Board emphasized two primary factors: the similarity of the marks and the relatedness of the services offered under the marks.

The Board found that the marks were nearly identical in appearance, sound, and commercial impression, with the only difference being the pluralization of Fieldvine’s mark. The Board also determined that the services provided by both parties were closely related, if not identical, in the eyes of consumers. State Permits offered services related to obtaining government and regulatory permits for construction. At the same time, Fieldvine provided software designed to facilitate the digitization and submission of forms necessary for obtaining similar construction-related permits. The overlap in the services was sufficient to create a likelihood of confusion, particularly given the near-identical nature of the marks.

Moreover, the Board considered the channels of trade and target consumers, noting that both parties operated in the construction industry and targeted similar customers—builders, contractors, and developers seeking assistance with permit acquisition. The convergence of these factors reinforced the Board’s conclusion that confusion was likely.

The TTAB also highlighted the significance of the Supplemental Register in the analysis. Registration on the Supplemental Register, as in the case of PERMITS.COM, indicated that the mark was descriptive and had not yet acquired distinctiveness.

Priority. The TTAB found that State Permits had been using the mark PERMIT.COM in commerce since at least 2013, five years before Fieldvine began using PERMITS.COM in 2018. The Board emphasized that priority of use must be established by competent evidence and can be proved by showing that the party used the mark in commerce before the other party. State Permits provided substantial evidence, including testimony and documentary proof, demonstrating its continuous use of PERMIT.COM since 2013.

Fieldvine argued that its use of PERMITS.COM since 2018 was sufficient to establish priority, but the Board found that this later use was subordinate to the earlier use by State Permits. Given the highly descriptive nature of both marks, the Board ruled that the first party to use the mark in commerce—State Permits—had superior rights.

The Board referenced Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987), where the Federal Circuit held that a prior user of a descriptive term could cancel a junior user’s registration on the Supplemental Register, even if neither party had established acquired distinctiveness. In Books on Tape, the petitioner, who was the prior user of the mark BOOKS ON TAPE, sought to cancel a Supplemental Register registration for the mark BOOKTAPES, arguing that there was a likelihood of confusion between the marks. The Federal Circuit ruled in favor of the petitioner, emphasizing that the Supplemental Register is intended for descriptive marks that have not yet acquired distinctiveness. The Federal Circuit held that a prior user of a descriptive mark is entitled to seek cancellation of a later registration on the Supplemental Register, even if the petitioner has not yet acquired distinctiveness for their mark.

Applying this precedent to the current case, the TTAB found that State Permits, as the prior user of the mark PERMIT.COM, was entitled to cancel Fieldvine’s registration of PERMITS.COM on the Supplemental Register.

The Case is Cancellation No. 92075095.

Judge: Wellington, T.

Attorneys: Kieran A. Lasater (Sparkman + Foote, LLC) for State Permits, Inc. Roberto Ledesma (Lewis & Lin, LLC) for FieldVine, Inc.

Companies: State Permits, Inc.; FieldVine, Inc.

Cases: Trademark USPTO