TTAB Cancels Registration on Abandonment and Void ab Initio Grounds
Jennifer Gaeta | Bloomberg Law
Shut EmDown Sports, Inc. petitioned to cancel the SHUT IT DOWN registration owned by Carl Dean Lacy for 113 clothing items on the grounds of abandonment and fraud. Petitioner contended that the registrant was not actually using the mark and had no intent to resume use. The fraud claim asserted that respondent was not using the mark on the goods on the filing date and when it submitted a declaration in support of a substitute specimen. The Trademark Trial and Appeal Board (“TTAB”) determined that the mark had been abandoned and that the registration was void ab initio.
SHUT IT DOWN Trademark Registration
The registrant registered the SHUT IT DOWN trademark for 113 clothing items including everything from “après-ski shoes” to “ballet shoes” to “cloth bibs for adult diners.” Shut EmDown at 6. The application was use-based and the registrant provided first use dates. The registrant signed the application and subsequent submissions to the U.S. Patent and Trademark Office, and declared that a submitted specimen was in use as early as the application date.
During discovery, registrant admitted that he had only used the mark in connection with “T Shirt, Jogging Suit, Sox, Baseball Cap, Basketball Short, Jersey, Towel” and that these were the products upon which he intended to use the mark. Id. at 9. He stated that he had first used the mark on these items on February 3, 2006, and continued to use the mark in conjunction with these items. Only 4 of the listed items “T-shirts, caps, jogging suits and jerseys” are actually listed among the 113 listed goods. Id. at 10. The registrant admitted that he had not used the mark on the other 109 identified goods.
The registrant provided no documents to support how many products were sold, nor did he have any documents relating to the advertising of the products or the date of first use. No product has been sold in the last five years.
TTAB Finds Mark Has Been Abandoned
A trademark registration may be cancelled on the ground of abandonment if use of the mark has been discontinued with no intent to resume use. See 15 U.S.C. §1127. Non-use for three years creates a prima facie case of abandonment which then shifts the burden onto the registrant to show use or intent to resume use. See id. In finding that the registrant had abandoned his trademark, the TTAB analyzed this issue in two parts. First, the TTAB looked at the 109 items with which the registrant had never used the mark. Second, the TTAB looked at the four goods with which the registrant claimed to have used the mark.
The TTAB noted that the registrant admitted that he had never used the mark in conjunction with the majority of the goods listed in the registration and that he had no intention of using the mark for those goods. This was sufficient to establish the prima facie case of abandonment. Shifting the burden on to the registrant, the registrant admitted that as to the 109 items, he had no intention of using the mark in conjunction with those goods. Accordingly, the TTAB found that the registrant had abandoned the mark as to those 109 goods. “No proof could be more persuasive than respondent’s admission of nonuse.” Shut EmDown at 18.
The TTAB also found that the registrant had abandoned the marks as to the remaining four goods as well. The evidence showed that no one had purchased any of the products in five years. There were no receipts of other documents and this lack of evidence was enough to again establish a prima facie case of abandonment.
Although the registrant had offered no evidence or testimony during the testimony period, he later filed a receipt and his response to the third request for the production of documents with the TTAB. The TTAB stated that the filing of these documents was inappropriate, however, even if the documents had been properly admitted, the receipt had no probative value as it was dated two years after the cancellation petition was filed, and did not bear a name or identify the subject matter of the transaction. The registrant also produced a hangtag, which was likewise not properly introduced. This hangtag had limited probative value as well because it was not accompanied by testimony describing how and when it was actually used. Because registrant had no evidence of use or intent to resume use, he was unable to rebut the prima facie case and the TTAB granted the petition to cancel on the ground of abandonment.
TTAB Finds Registration Void ab Initio
As an additional ground for cancellation, petitioner stated that the registration was procured fraudulently because the registrant had not made use of the mark when he filed the application or when he submitted a substitute specimen. The TTAB noted again that the registrant had admitted that he had not used the mark in connection with 109 of the listed items, which was a false representation. Moreover, there was no evidence that corroborated the registrant’s contention that he used the mark in connection with the other four goods. Thus, the TTAB found that the petitioner had made a prima facie case of non-use at the time the use-based application was filed pursuant to 15 U.S.C. §1051(a), without actually addressing the pleaded ground of fraud.
The TTAB explained that an application is held to be void either based on fraud or nonuse. Although the cancellation petition in this proceeding had not separately included a count for non-use, the registrant was on notice that the petitioner contended he had not used the mark as of the filing date and accordingly, the separate count for non-use was not critical. Because the mark was not in use at the time the application was filed, the registration was void ab initio and, therefore, was also cancelled on that alternative basis.
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