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ACT, Inc. v. Worldwide Interactive Network

United States District Court, E.D. Tennessee, Knoxville

August 14, 2019

ACT, INC., Plaintiff & Counter-Defendant,
v.
WORLDWIDE INTERACTIVE NETWORK, Defendant & Counter-Claimant.

          H. Bruce Guyton, Magistrate Judge

          MEMORANDUM OPINION

          TRAVIS R. McDONOUGH, UNITED STATES DISTRICT JUDGE

         Before the Court is Defendant and Counter-Claimant Worldwide Interactive Network's (“WIN”) motion for partial summary judgment (Doc. 80). For the reasons stated hereafter, WIN's motion will be GRANTED IN PART and DENIED IN PART.[1]

         I. BACKGROUND[2]

         At the heart of this trademark- and copyright-infringement dispute is a product known as “WorkKeys.” ACT developed WorkKeys, a series of workforce-development assessments that measure workplace skills affecting an individual's job performance. (Doc. 121, at 4.) WorkKeys assessments are the “cornerstone” of ACT's “Workforce Solutions for Career Readiness” program. (Id. at 6.) Completion of WorkKeys is also the basis for the National Career Readiness Certificate® (“NCRC”), “the nation's most recognized work readiness credential that is recommended by thousands of employers.” (Id. at 5.) ACT has been offering the NCRC since 2006. (Doc. 83, at 867.) The NCRC is awarded at four levels, “BRONZE, ” “SILVER, ” “GOLD, ” or “PLATINUM, ” depending on an individual's performance on the WorkKeys assessments (id. at 887, 889), and an individual's certificate will reflect this level of achievement (id. at 4-19). Specifically, “BRONZE” requires minimum scores of 3 or above, “SILVER” requires minimum scores of 4 or above, “GOLD” requires minimum scores of 5 or above, and “PLATINUM” requires minimum scores of 6 or above. (Id. at 884, 886.)

         All four of these levels together, “BRONZE SILVER GOLD PLATINUM” or “PLATINUM GOLD SILVER BRONZE” can be found on many of ACT's advertisements and marketing materials, employer guides, and technical documentation. (See e.g., Doc. 83-1, at 84 (“Recipients are awarded certificates of Platinum, Gold, Silver, or Bronze levels, depending on their skill levels in Applied Mathematics, Reading for Information, and Locating Information.”); id. at 88-89 (“describing that the ACT NCRC is “[a]warded at four levels-Platinum, Gold, Silver, and Bronze”); Doc. 83, at 906 (article explaining that, “[f]or any participating county, ACT's Work Ready Communities website displays a list of employers in an area who recognize the [NCRC], as well as the number of individuals who have achieved one of four levels of NCRC certification, based on test results: bronze, silver, gold or platinum”).

         WIN developed the “Career Readiness System, ” a product similar to ACT's WorkKeys system, which also uses career-readiness assessments to assess an individual's job skills. And, like WorkKeys, a credential earned by completion of these assessments is also awarded at four levels of achievement, “Bronze, ” “Silver, ” “Gold, ” and “Platinum.” (Id. at 20-27.)

         In 2017, the State of South Carolina issued a Request for Proposal (“RFP”) for a “Career Ready Test.” (Doc. 83, at 28.) Both ACT and WIN submitted written proposals in response to the RFP, but the contract was ultimately awarded to WIN. (Id.; see also Doc. 101-1, at 22.)

         After WIN was awarded the contract but prior to filing this lawsuit, ACT filed six United States Federal Trademark Applications (the “Trademark Applications”) for the words “PLATINUM, ” “GOLD, ” “SILVER, ” and “BRONZE” and the phrases “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM.” (See generally Doc. 83, at 135-828.) In each of these Trademark Applications, ACT identified the services connected with the use of the alleged marks as: “Providing an assessment-based credential which measures and certifies the essential work skills needed for success in jobs across multiple industries and occupations; advisory and consultancy services relating to workforce development programs.” (Doc. 83, at 261, 308, 585, 684, 754, 821.) Between September 5 and September 7, 2018, the United States Patent and Trademark Office (“USPTO”) issued nonfinal Office Actions, in which it rejected all six of ACT's federal trademark applications. (Doc. 83, at 243-47 (“PLATINUM”), 433-40 (“GOLD”), 569-73 (“SILVER”), 669-73 (“BRONZE”), 739-42 (“PLATINUM GOLD SILVER BRONZE”), 807-10 (“BRONZE SILVER GOLD PLATINUM”).) Specifically, as relevant here, the USPTO included the following as bases for its rejection: (1) “the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant's services and to identify and distinguish them from others”; and (2) “[t]he record is unclear as to whether applicant is seeking registration of a certification mark or a trademark/service mark.” (Id. at 244-46, 437-39, 570-72, 670-72, 740- 41, 808-09.)

         With respect to “PLATINUM, ” the USPTO's Office Action explained that:

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant's services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment. See In re Volvo Cars of N. Am., Inc., 46 U.S.P.Q.2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 U.S.P.Q.2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark would be perceived merely as a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b).
Terms and expressions that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227, 1229 (TTAB 2010). Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 U.S.P.Q.2d at 1229; In re Aerospace Optics, Inc., 78 U.S.P.Q.2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 U.S.P.Q.2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 U.S.P.Q.2d at 1229); TMEP §1202.04(b).
[T]his term or expression is commonly used to refer to a specific level of membership, success, quality or rating and conveys that a person or entity has received such a rating.

(Doc. 83, at 244.) The nonfinal Office Actions rejecting ACT's trademark applications for “GOLD, ” “SILVER, ” and “BRONZE” contain almost identical language. (Id. at 437, 570, 670.)With respect to “BRONZE SILVER GOLD PLATINUM, ” the USPTO's nonfinal Office Action explains that:

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant's services from those of others and to indicate the source of applicant's services.
Determining whether a designation functions as a mark depends on the commercial impression it makes on the relevant public and whether purchasers would be likely to regard it as a source-indicator for the services.
The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a service mark.
In this instance, the applied-for mark, as shown on the specimen, does not function as a service mark because the wording “BRONZE SILVER GOLD PLATINUM” is being used to describe the four different levels an individual can be awarded through applicant's National Career Readiness Certificate program. This is underlined by the manner in which the mark is being presented, namely, “Bronze, Silver, Gold and Platinum”, which doesn't lend itself to be viewed as a whole mark, but rather individual words, and by the fact that the specimen states that participants can earn these four different NCRC certificates. This use conveys to consumers that these credential levels are part of the ACT National Career Readiness Certificate program, and not the actual source of the credential program.
Further, the second page of the specimen shows each of the words separated into different sections listing out the requirements needed to obtain each ACT National Career Readiness Certificate at each of those levels. This specimen in particular highlights the use of the wording Bronze, Silver, Gold and Platinum to indicate a level of achievement, membership or status that is widely used across industries to indicate the exact same thing.

(Doc. 83, at 808 (internal citations omitted); see also Id. at 743 (almost identical language pertaining to “PLATINUM GOLD SILVER BRONZE”).)

         After the initial rejections, ACT submitted its responses to the USPTO's nonfinal Office Actions. As part of its response, ACT requested that its Trademark Applications for “PLATINUM, ” “GOLD, ” “SILVER, ” and “BRONZE” be amended to seek registration of the terms as “certification marks, ” rather than “service marks.” (Doc. 83, at 148-150, 297-99, 491-93, 606-08.)

         On May 14, 2019, the USPTO issued further nonfinal Office Actions in which it rejected “PLATINUM, ” “GOLD, ” “SILVER, ” and “BRONZE” as certification marks:

Applicant's response does not show that others are authorized to use the applied-for mark and provide the applied-for services as the argument and exhibits provided both indicate that applicant utilizes and issues the applied-for mark. Specifically, applicant states that to earn an ACT NCRC credential at one of the four levels, consumers must successfully complete three ACT Work Keys assessments. Based on applicant's Exhibit B evidence, it appears as though applicant is providing the educational training related to this credential as it is the one conducting the courses needed to pass the required assessments and ultimately the party that conveys the credential to the consumer. See Pages 15-19 of applicant's response. It does not appear from this evidence or the rest of the exhibit that the mark is being used by other persons on their own services, with authorization from applicant.
. . . .
Lastly, a certification mark specimen must show how an authorized party other than the owner uses the mark in commerce to certify “regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person's goods or services; or that members of a union or other organization performed the work or labor on the goods or services.” 37 C.F.R. §2.56(bX5); TMEP §1306.02(aXi)(B).
In the present case, the specimen consists of a certificate issued by applicant. The specimen does not show proper certification mark use because it highlights the fact that applicant is using the applied-for mark on a certificate that it provides to consumers. There is nothing showing that the mark [is] used by others on their own services.
In this case, applicant is performing the services in connection with which the mark is used and thus is not a certification mark. See TMEP §1306.01(a).

(Doc. 88-6, at 59 (“BRONZE”); see also Doc. 88-10, at 6 (“PLATINUM”); Doc. 88-11, at 13 (“GOLD”); Doc. 88-13, at 1 (“SILVER”).) The USPTO also issued further nonfinal Office Actions with respect to “BRONZE SILVER GOLD PLATINUM, ” and “PLATINUM GOLD SILVER BRONZE, ” reiterating its conclusion that the applied-for marks, “as used on the specimen of record, ” do not indicate the source of ACT's services or identify and distinguish them from others:

The applied-for mark, as shown on the specimen, does not function as a trademark because the mark simply appears as various levels or performance designators rather than the source of the applied-for services. The term “PLATINUM GOLD SILVER BRONZE” does not appear to indicate the source of the services as each work is placed separately from each other and is placed in a “level of proficiency” category that invites consumers to view them as achievement designators rather than source designators. ACT, WORKKEYS, NCRC, or ACT WORKKEYS NCRC appear to be the source designators here as the specimen states that “the ACT NCRC is awarded at four levels”. Thus, consumers view ACT NCRC as the source and “PLATINUM GOLD SILVER BRONZE” as merely the levels of achievement.

(Doc. 88-8, at 5-6 (““PLATINUM GOLD SILVER BRONZE”); see also Doc. 88-9, at 9-10 (“BRONZE SILVER GOLD PLATINUM”).

         In Counts III through V of its amended complaint, [3] ACT asserts claims against WIN under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for: (1) unfair competition by infringement; (2) use of false designation; and (3) false advertising.[4] (Doc. 121, at 39-47.) WIN filed a motion for partial summary ...


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