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The Zest

Trademarking a wellness retreat name: Classes 41 and 43 and use in commerce

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A retreat name is a service mark. The programming (workshops, classes, sessions) usually goes in Class 41, and Class 43 covers lodging and meals if you're the one providing them. You can file before your first retreat using the intent-to-use basis, but the name doesn't count as "used in commerce" until a retreat has actually happened under it. Advertising one and taking deposits isn't enough.

A retreat is a bundle of services

To the person booking, a retreat is one experience. To the USPTO, it's several services that sit in different classes. Here's how the Nice Classification sorts the pieces:

  • Class 41, "Education; providing of training; entertainment; sporting and cultural activities." The list includes "arranging and conducting of workshops [training]," "arranging and conducting of seminars," "conducting fitness classes" and "arranging and conducting of conferences."
  • Class 43, "Services for providing food and drink; temporary accommodation." The list includes "holiday camp services [lodging]," "hotel accommodation services," "food and drink catering" and "rental of meeting rooms."
  • Class 44, which covers "health spa services" and "massage," if those are part of what you provide.

The Class 43 note also points out what it doesn't cover: "travel and transport reservation services" go in Class 39. I wrote about how classes work generally in the article on trademark classes.

Only claim what you actually provide

Here is the part that surprises people. Booking a retreat at a resort doesn't make you a provider of lodging. If the venue houses and feeds your guests and you run the program, the program is your core service. Whether anything belongs in Class 43 depends on what you do yourself. The Class 43 list does include "temporary accommodation reservations," so a founder who handles room bookings for guests has a different answer than one who sends guests to book directly with the venue.

That matters because every class in an application needs a basis. Under 37 C.F.R. § 2.86, a multiple-class application needs a fee for each class, and either dates of use and a specimen or a statement of bona fide intent to use for each class. The intent-to-use statute requires a "bona fide intention, under circumstances showing the good faith" of the applicant. Filing for classes you don't plan to provide isn't a shortcut. It's extra fees for classes you'll have trouble supporting.

When does a retreat count as use?

The Lanham Act's definition is specific. A service mark is in use in commerce when it is "used or displayed in the sale or advertising of services and the services are rendered in commerce." Both halves matter. The advertising alone doesn't do it.

The TMEP, the manual USPTO examining attorneys follow, says announcing a future service, including taking advance reservations or purchases, is not service mark use. Retreat founders run into this all the time, because selling spots months ahead is how retreats get filled.

The courts agree. In Couture v. Playdom, decided by the Federal Circuit in 2015, the court affirmed cancellation of a service mark registration because the owner had only posted a website marked "Under Construction" and hadn't provided any services when he filed. The court said "rendering services requires actual provision of services." It quoted Aycock Engineering v. Airflite: "advertising or publicizing a service that the applicant intends to perform in the future will not support registration."

Does a single in-state retreat count as "commerce"?

The Lanham Act defines commerce as "all commerce which may lawfully be regulated by Congress." The TMEP gives three examples of services rendered in commerce: services rendered across state lines, customers who cross state lines in response to advertising, and licensees or franchisees in more than one state. A retreat in Florida that draws guests from other states through its marketing fits the second example.

The once-a-year question

Many retreats run once or twice a year. That raises a fair question about whether the name stays in use between them.

The statute defines "use" as "bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." It also says "nonuse for 3 consecutive years shall be prima facie evidence of abandonment." A retreat that runs on a regular schedule, with marketing for the next one going out in between, looks like a business operating in the ordinary course. A single event held mainly to lock down a name is the kind of use the definition excludes.

What to file before the first retreat

If you're naming a retreat you haven't hosted yet, the usual sequence looks like this:

  1. File an intent-to-use application in the classes for services you'll provide. The current USPTO fee is $350 per class.
  2. Host the retreat under the name, with guests attending and the program delivered.
  3. File the Statement of Use, at $150 per class, with a specimen showing the name used in offering the retreat. You have six months after the notice of allowance, and extensions are available at $125 per class.

For services, the TMEP requires a specimen that shows a "direct association between the mark and the services." A page on your website advertising the retreat under the name usually works, as long as it shows the URL and the date you captured it. A "coming soon" page doesn't. I go through what works in the article on specimens, and the filing basis itself in the article on intent-to-use applications.

What this means for your retreat

The name of a retreat can be protected the same way any service brand can. The two things to get right are scope and timing. Scope means claiming the classes for services you actually provide under the name. Timing means filing on intent early, then proving use only after a retreat has actually taken place, not when the sales page goes live.

If you're planning a retreat and want to see how the search and filing work for event and service names, the packages are on the services page, and the FAQs page answers most of what comes up before a first call.

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(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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