Keyword Advertising Constitutes Valid Trademark Use In Non-Use Cancellation Proceeding

Dong-Hun Lee V. Tae-Sun Park, Intellectual Property Trial And Appeal Board (Case No. 2016 HEO 5439, March 15, 2017).

In June 2015, Tae-Sun Park, a Korean individual, filed a non-use cancellation action before the Intellectual Property Trial and Appeal Board ("IPTAB") against a registration for FILLTOX & Korean transliteration covering medical clinic services, dermatology, plastic surgery, and related services in Class 44. In July 2016, the IPTAB found in Park's favor and issued a decision cancelling the registration.

On appeal before the Patent Court, the registrant Dong-Hun Lee submitted evidence of keyword advertising for his plastic surgery clinic. The evidence showed that when an Internet user typed the Korean transliteration for FILLTOX (that is, the Korean part of the registration at issue) into a search engine as a keyword search, a link to Lee's plastic surgery clinic's website would appear. Upon clicking the link, users would be directed to the clinic's