## Facts

- James E. White (d/b/a R.I. Productions) was the principal member and songwriter for a rock-and-roll band called “The Romulans,” which performed at concerts and parties and advertised in rock-and-roll magazines.
- As part of the band’s advertising activities, White distributed recordings to radio stations and handed out fliers and other materials.
- In 1982, White created a “connect-the-dots” game bearing the mark THE ROMULANS and a design mark of three overlapping triangles.
- The game consisted of three photocopied pages stapled together: (1) instructions plus the band’s name/address and the mark; (2) the connect-the-dots page; and (3) the solution page showing the logo and the mark.
- White distributed the games at his band’s performances, at other bands’ performances, through the mail, and to friends; he sometimes gave the game away and sometimes sold it.
- White stated he sold the games for $0.25, $0.50, and sometimes $1.00, but kept no business records; he attested he sold “at least a couple of hundred” since 1982 and estimated sales of about 20–25 per year at the time of the dispute.
- On August 6, 1991, White filed a USPTO application seeking to register THE ROMULANS for “parlor games namely connect the dots game sets” on the Principal Register.
- Paramount Pictures Corporation produced Star Trek television programs and films and coined the term ROMULANS for an alien race featured in Star Trek productions from 1966 onward.
- Paramount opposed White’s application before the Trademark Trial and Appeal Board (TTAB).
- The TTAB granted summary judgment for Paramount, sustaining the opposition and refusing registration, concluding White’s activities did not show a bona fide trademark use in commerce for the identified goods.
- White appealed to the U.S. Court of Appeals for the Federal Circuit under 15 U.S.C. § 1071(a).

## Issues

1. Whether White’s distribution and occasional low-price sales of the connect-the-dots sheets constituted bona fide “use in commerce” of THE ROMULANS for the identified goods sufficient to support registration on the Principal Register.
2. Whether the TTAB properly granted summary judgment sustaining Paramount’s opposition based on the undisputed record regarding White’s claimed use.

## Decision

- The Federal Circuit affirmed the TTAB’s grant of summary judgment.
- The court agreed that White’s connect-the-dots activity, as shown by the record, did not amount to bona fide trademark use in commerce for “parlor games” that would support federal registration.
- As a result, Paramount’s opposition was sustained and White’s application to register THE ROMULANS was denied.

## Legal Principles

- For registration, “use in commerce” requires bona fide commercial use of a mark on the identified goods, not token, sporadic, or purely advertising-oriented distribution that does not reflect ordinary trade in the relevant goods.
- Evidence that a claimed product is distributed mainly as an advertising handout, sold only occasionally for nominal sums, and supported by little or no business documentation can be insufficient to establish trademark use in commerce for goods.
- Summary judgment is appropriate in TTAB proceedings when the material facts are not genuinely disputed and the moving party is entitled to judgment as a matter of law; an applicant’s own testimony and admissions can establish the lack of qualifying use.

## Conclusion

The Federal Circuit affirmed the TTAB’s refusal to register THE ROMULANS for connect-the-dots game sets because White’s photocopied, stapled game sheets—distributed largely as part of the band’s advertising efforts and sold only sporadically for nominal amounts without business records—did not constitute bona fide trademark use in commerce for the identified goods, making summary judgment for Paramount proper.


White v. Paramount Pictures Corp., 1997 WL 76957 (1997)