UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT

_______________________

No. 98-11485 Civil Docket #98-CV-70 _______________________

BURLINGTON NORTHERN SANTA FE CORP., A Delaware Corporation

BURLINGTON NORTHERN AND SANTA FE RAILWAY COMPANY, A Delaware Corporation,

Plaintiffs-Appellees,

versus

WILLIAM S. PURDY, ET AL,

Defendants,

WILLIAM S. PURDY, An Individual,

Defendant-Appellant.

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Appeal from the United States District Court for the Northern District of Texas _________________________________________________________________ December 7, 1999

Before JONES and DENNIS, Circuit Judges, and PRADO*, District Judge.

EDITH H. JONES, Circuit Judge:**

William S. Purdy challenges the district court’s grant of

summary judgment, which declared that his registration of the

* District Judge of the Western District of Texas, sitting by designation. ** Pursuant to 5TH CIR. R. 47.5, the Court has determined that this opinion should not be published and is not precedent except under the limited circumstances set forth in 5TH CIR. R. 47.5.4. service mark “BNSF” with the United States Patent and Trademark

Office is void ab initio and must be cancelled. Purdy argues that

his service mark has been used in commerce continuously from 1993

to the present, that it is not mere “token use,” and that his

limited profit motive does not disqualify him or his company from

establishing a valid service mark. Finding no error in the

district court’s contrary conclusion, we affirm.

We have reviewed the district court’s opinion and the

record evidence de novo. The district court correctly stated the

applicable law and focused on the twin requirements of “use in

commerce” to support a valid service mark registration: that the

mark has been used in the promotion of services, and that the

services identified by the mark have been rendered in interstate

commerce.

(emphasis added). As the court noted

and legislative history demonstrates, mere token use is

insufficient to justify federal registration. The court accepted

all of Purdy’s allegations as true and still found that “Purdy did

not make a bona fide use of the mark BNSF in the ordinary course of

trade before the mark was registered to him.”

Having reviewed the summary judgment record, we must

agree with the district court’s application of the facts to the

law. It is uncontested that Purdy has used the designation “BNSF”

to promote the cause of enhancing railroad safety and that he has

used business cards, flyers, markings on his car, and other devices

emblazoned with “BNSF” for publicity and advertising purposes.

Nevertheless, he has not fulfilled the second part of the test --

2 the actual rendition of services in interstate commerce -- except

by sporadic and insubstantial transactions. The record identifies

only a handful of instances in which Purdy was paid anything for

his “services,” and all of these incidents involved work performed

for long-time friends. Nominal or token sales to personal friends

do not constitute a bona fide commercial use of a trademark. J.

McCarthy, McCarthy on Trademarks and Unfair Competition, § 16:7

(4th ed. 1997) (citing cases). For several years, Purdy has

conducted information-gathering and -dissemination regarding

railroad safety matters, but the record is bereft of evidence that

he was engaged in trade or commerce using the “BNSF” mark.

Instead, Purdy’s profession has been that of advocacy, apparently

on behalf of a worthy cause. While we do not belittle Purdy’s

activities, they do not demonstrate use of the service mark in

furtherance of a business intended to provide services for

reimbursement.

A recent circuit court decision reinforces our

conclusion. Allard Enterprises, Inc. v. Advance Programing

Resources, Inc.,

(6th Cir. 1998). In Allard, the

defendant’s use of advertising materials was similar to that of Mr.

Purdy, but the defendant had actually sold his employment services

to third parties, and the entire purpose of the advertising was to

promote the venture for profit. Purdy’s advertising has been

devoted to consciousness-raising in the public rather than to the

promotion of a business venture. He rendered services for

3 reimbursement in connection with the advertising in only a de

minimus fashion. He used a mark, but not in trade.

For these reasons, the judgment of the district is

approved and AFFIRMED.

4