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  • Abandonment.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • The Trademark Act provides for the cancellation of registrations if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064.
  • Relevant Statute(s)
    • Section 45 of the Trademark Act, 15 U.S.C. § 1127.
      • Abandonment of mark. A mark shall be deemed to be "abandoned" if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
  • Grounds for Abandonment.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • Section 14(3) of the Trademark Act, (15 U.S.C. §1064(3), lists, as one of the grounds for cancellation, abandonment, and Section 45 of the Act, 15 U.S.C. §1127, in pertinent part, defines "abandonment" of a mark as follows: "When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark."
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • There are two elements to an abandonment claim: nonuse and an intent not to resume use. A plaintiff must show both of these elements unless it can show three years of nonuse, which prima facie establishes abandonment, in which case the burden shifts to the defendant to show either that it has used the mark, or that it has an intent to resume use. See Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 USPQ2d 1307, 1309 (Fed. Cir. 1989).
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007).
      • The facts alleged must set forth a prima facie case of abandonment by a pleading of at least three consecutive years of non-use or must set forth facts that show a period of non-use less than three years coupled with an intent not to resume use. See Section 45 of the Trademark Act; Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990).
  • A mark is prima facie abandoned after three consecutive years of non-use.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides that a mark is abandoned when "its use has been discontinued with intent not to resume use… Nonuse for three consecutive years shall be prima facie evidence of abandonment."
  • Three consecutive years of non-use suggests an intent to discontinue use.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • Proof of non-use for three consecutive years, however, constitutes prima facie evidence of abandonment, because it carries an inference of lack of intent to resume use. See supra, 15 U.S.C. §1127. See also Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343 (4th Cir. 2000).
  • To establish abandonment, it is necessary to show not only acts indicating a practical abandonment, but an actual intent to abandon the mark.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Regarding intent, the predecessor court to the Court of Appeals for the Federal Circuit, our primary reviewing court, quoted the Supreme Court in saying: "To establish the defense of abandonment, it is necessary to show not only acts indicating a practical abandonment, but an actual intent to abandon. Acts which unexplained would be sufficient to establish an abandonment may be answered by showing that there never was an intention to give up and relinquish the right claimed." Miller Brewing Co. v. Oland's Breweries Ltd., 192 USPQ at 267, citing Saxlehner v. Eisner & Mendelsohn Co., 179 U.S. 19, 31 (1900).
  • To fall under the three-year non-use statutory presumption, the use must have been discontinue with intent not to resume such use.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • However, to fall under the statutory presumption, the use must have been discontinued "with intent not to resume such use." 15 USC §1127.
  • Intent not to resume use may be inferred from the circumstances, and use of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Intent not to resume use may be inferred from the circumstances, and "use" of a mark means "the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." Id.
  • A mark is deemed abandoned when it has lost all capacity as an indication of source.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • In short, a mark is deemed to be abandoned only when it has lost all capacity as an indication of source. Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corporation, supra, 214 USPQ at 335-36.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • A trademark registration may be cancelled if the mark has become "abandoned." See Trademark Act §45, 15 U.S.C. §1127. A mark can become abandoned by any act or omission of the registrant which causes the mark to lose its significance as an indication of origin. Thus, uncontrolled and "naked" licensing can result in such a loss of significance of a trademark that a registration should be cancelled. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition §18:48 (4th ed. 2007).
  • Opposer should allege the mark has lost its capacity as an indication of source.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • We find that Paragraph nos. 19 and 20 are a legally insufficient pleading of abandonment because they fail to include any allegation that the mark has lost all capacity as a source-indicator for applicant's goods.
  • A mark is not abandoned so long as at least some purchases identify the owner with its mark.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • Opposer's theory essentially is identical to the theory which the Board, relying on Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 335 (CCPA 1982), rejected in Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1446 (TTAB 1997): "We begin our analysis with the premise that maintenance of exclusivity of rights in a mark is not required in order to avoid a finding of abandonment ... Instead, so long as at least some purchasers identify respondent with the registered mark, it cannot be said that respondent's course of conduct has caused the registered mark to lose its significance as a mark ... As in Crown, it is necessary to remember the following: [There is a] distinction between conduct of a trademark owner which results in a loss of right to enjoin a particular use because of an affirmative defense available to that user and conduct which results in a loss of all rights of protection as a mark against use by anyone. Only when all rights of protection are extinguished is there abandonment." [Crown, 214 USPQ at 335.].
  • A mark is abandoned when the owner discontinues use and does not intent to resume use.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when "its use has been discontinued with intent not to resume such use."
  • Abandonment is a question of fact.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • Abandonment is a question of fact. See Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1579, 222 USPQ 665, 667 (Fed. Cir. 1984).
  • An inference of abandonment must be based on proven fact.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • Thus, any inference of abandonment must be based on proven fact. A party claiming that a mark has been abandoned must show "non-use of the mark by the legal owner and no intent by that person or entity to resume use in the reasonably foreseeable future." See Stetson v. Howard D. Wolf & Associates, 955 F.2d 847, 850 (2d Cir. 1992).
  • Burden of Proof: The party seeking abandonment bears the burden of proof, by a preponderance of the evidence.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • In a cancellation proceeding on the ground of abandonment, because registrations are presumed valid under the law, the party seeking cancellation bears the burden of proving a prima facie case of abandonment by a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • To the extent that respondent is alleging that petitioner has abandoned its mark "even after the date that Registrant adopted and used the present mark" (Brief at 22), it has the burden of coming forward with evidence of abandonment. West Florida Seafood, 31 USPQ 2d at 1666.
  • Burden of Proof: After a proper showing by petitioner, the trademark holder must rebut the showing with evidence.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • If petitioner presents a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the trademark holder to rebut the prima facie showing with evidence. Cerveceria v. Cerveceria, supra.
  • Burden of Proof: Respondent bears burden of establishing intent to abandon the mark where there is no three-year period of non-use to create presumption of abandonment.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Here we do not have the three-year period of non-use to create a presumption of abandonment. Thus, the burden of establishing an intent to abandon the mark falls on respondent. See Online Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
  • Burden of Proof: The burden of proof does not shift to respondent until petitioner has made a prima facie case of abandonment.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • Petitioner points out that respondent has not submitted any evidence into the record. However, the burden does not shift to respondent unless petitioner has made a prima facie case of abandonment. In short, petitioner must first make his case by showing that petitioner has not used the ECSTASY mark on the identified goods for at least three consecutive years, as set forth in the statute, or by showing non-use with no intent to resume use. This, petitioner has not done.
  • Uncontrolled licensing can result in abandonment of a mark.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • A trademark registration may be cancelled if the mark has become "abandoned." See Trademark Act §45, 15 U.S.C. §1127. A mark can become abandoned by any act or omission of the registrant which causes the mark to lose its significance as an indication of origin. Thus, uncontrolled and "naked" licensing can result in such a loss of significance of a trademark that a registration should be cancelled. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition §18:48 (4th ed. 2007).
  • To rebut period of nonuse, trademark holder must produce evidence that its actions were similar to a reasonable businessman intending to continue using a mark.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Further, petitioner has not provided an excuse for this long period of nonuse. "To prove excusable nonuse, the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable businessman, who had a bona fide intent to use the mark in United States commerce, would have undertaken." Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998).
  • Holding a mark "in esteem" doest not demonstrate an intent to continue using a mark.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Petitioner's nebulous statement that it was holding the mark "in esteem" is not sufficient to demonstrate that it had a bona fide intent to use the mark in commerce.
  • Abandonment after three consecutive years of non-use also applies to unregistered common-law marks.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • The statutory presumption of abandonment after three years non-use does apply to marks established via common-law usage. 15 USC §1127; see also Miller Brewing Co. v. Oland's Breweries Ltd., 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976); Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008); and L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1967 (TTAB 2007).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • As indicated above, a three-year period of non-use establishes a presumption that even a federally registered mark is abandoned. The board has applied the statutory presumption of abandonment "to a party's unregistered common-law mark." Miller Brewing Company v. Oland's Breweries [1971] Limited, 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976).
  • License for a common law mark may be based on an oral agreement.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Petitioner has testified that to the extent he has briefly stopped use of the mark in Colorado, he intended, and continues to intend, to resume such use. (B. Giersch depo. at 90:11-21). Meanwhile, his brother has continuously used the mark to run a parallel business in Dallas, Texas since before the time of alleged abandonment. (G. Giersch depo. at 19:20). It is clear that Mr. Gerald Giersch's use has been undertaken by permission from petitioner and is controlled by petitioner. Basic, Inc. v. Rex, 167 USPQ 696 (trademark license may be oral); see also McCarthy on Trademarks and Unfair Competition §18:43 and § 18:54 (4th ed. 2008), citing the Trademark Manual of Examination Procedure 1201.03(b)(common law rights may be licensed, and federal registration may even be based on such license).
  • Sale agreement containing general quality-control provisions may prove that party has not affirmatively abandoned common-law rights to a mark.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • As to the sale of petitioner's business, it is apparent from the Agreement to Sell Business, that while petitioner sold his Colorado business in 2004, petitioner intended to maintain use of the DESIGNED2SELL mark for himself and his licensees. (B. Giersch, Ex. 25). The agreement stipulates that "Seller is the owner of that trade name [DESIGNED2SELL]." Id., Para. 6. The agreement further includes general quality-control provisions, consistent with a valid licensing agreement. Id. Accordingly, we find that petitioner has not affirmatively abandoned his common-law rights via sale of his business.
  • Whether petitioner has a right to continue to use the registered mark is not determinative of the question of abandonment; rather, the focus must be on what rights, if any, respondent has in the registered mark.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • "Thus, under Crown, whether petitioner in this case has a right to continue to use the registered mark is not determinative of the question of abandonment; rather, the focus must be on what rights, if any, respondent has in the registered mark ... Moreover, as emphasized by the court in Crown, "a mark becomes abandoned only when the mark loses its significance as indication of origin, not the sole identification of source." ... In other words, regardless of whether petitioner has the right to use the WOODSTOCK'S mark, the fact that the registered WOODSTOCK'S PIZZA PARLOR and design mark identifies respondent as one of two sources of the restaurant services negates any inference of abandonment." Woodstock's Enterprises, supra, 43 USPQ2d at 1446.
  • A mark becomes abandoned only when the mark loses its significance as indication of origin, not the sole identification of source.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • "Thus, under Crown, whether petitioner in this case has a right to continue to use the registered mark is not determinative of the question of abandonment; rather, the focus must be on what rights, if any, respondent has in the registered mark ... Moreover, as emphasized by the court in Crown, "a mark becomes abandoned only when the mark loses its significance as indication of origin, not the sole identification of source." ... In other words, regardless of whether petitioner has the right to use the WOODSTOCK'S mark, the fact that the registered WOODSTOCK'S PIZZA PARLOR and design mark identifies respondent as one of two sources of the restaurant services negates any inference of abandonment." Woodstock's Enterprises, supra, 43 USPQ2d at 1446.
  • The ground of abandonment is not applicable to intent to use applications (Section 1b).
    • Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010).
      • With respect to the ground of abandonment, this ground is not available when the opposed application is based on Section 1(b). Use of a mark that is the subject of an application alleging a bona fide intent to use is not required until the applicant files a statement of use. See Consolidated Cigar Corp. v. Rodriguez, 65 USPQ2d 1153 (TTAB 2002).
  • The doctrine of licensee estoppel prevents the licensee from seeking abandonment of a mark.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • In Paragraph no. 21 of the proposed amended pleading, opposer alleges that applicant has abandoned the mark due to its naked licensing thereof, in view of opposer's uncontrolled use of the mark since 1995. We find that this allegation fails to state a claim for relief. Even accepting opposer's allegations of naked licensing as true, we find that they fail to state a claim for relief in this case because opposer, as the alleged licensee, is estopped to challenge applicant's ownership of the mark, under the doctrine of licensee estoppel. See, e.g., Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991). Because, as a matter of law, opposer cannot prevail on this proposed abandonment claim, it would be futile to allow opposer to amend the notice of opposition to assert such claim.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • As discussed above in connection with opposer's Rule 15(a) motion to amend its pleading to add these abandonment claims, the mere fact that opposer might be entitled to use the mark, or that applicant therefore cannot claim the exclusive right to use the mark, is legally insufficient to establish that applicant has abandoned the mark. Opposer has not presented any evidence from which a reasonable factfinder might conclude that applicant's mark has lost all capacity to act as a source-indicator for applicant's goods; absent such a finding, no abandonment exists. Moreover, for the reasons discussed above, opposer is legally estopped to challenge applicant's ownership of the mark on the basis of applicant's alleged abandonment of the mark due to his granting of a "naked license" to opposer.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Petitioner's "naked licensing" abandonment argument fails because there is no evidence that respondent licenses the Bell logo mark to Unical, or to anyone else, for use in connection with telecommunications services. Because respondent does not license the mark for use in connection with telecommunications services, there is no basis for finding that respondent engages in naked licensing with respect to such services; the question of whether respondent exercises adequate quality control over use of the mark in connection with such services does not even arise. Moreover, even if petitioner is correct in contending that respondent has failed to exercise quality control over Unical's marketing of telephones and telephone products (a question we need not and do not decide), such failure by respondent is irrelevant to the issue to be decided in this case, i.e., whether respondent has abandoned the mark with respect to the telecommunications services recited in the registration petitioner seeks to cancel.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Nor are we persuaded by petitioner's argument that the Bell logo mark has lost its significance as a mark and should be deemed abandoned because, since it is used by multiple, unrelated sources (i.e., the other RBOCs), it does not identify a single source. This argument ignores the fact that respondent's registration is a concurrent use registration. A concurrent use registration, by its very nature, contemplates that the registered mark can and does function to identify more than one source. The registered mark can identify more than one source because each source's use of the mark is subject to conditions and limitations which eliminate likelihood of confusion (such as, in the present case, the trade modifiers the RBOCs use in conjunction with the Bell logo mark). Petitioner's "single source identifier" requirement would render every concurrent use registration invalid due to abandonment.15 This is not to say that a concurrent use registration can never be cancelled on the ground of abandonment, but a petitioner asserting such ground must do more than merely show that the registered mark is being used concurrently by the concurrent use registrants in accordance with the conditions and limitations set forth in their concurrent use registrations. FOOTNOTE 15 "Indeed, petitioner's "single source identifier" abandonment requirement is untenable even outside the context of a concurrent use registration. See Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corporation, 680 F.2d 755, 214 USPQ 327, 332-33 (CCPA 1982)(specifically rejecting as "bad law" the view that abandonment occurs "when a mark loses its capacity to point out uniquely the single source or origin of goods, that is, unless one maintains exclusivity of rights" (emphasis in original))."
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • There exists no genuine issue of material fact that respondent contracts with foreign companies for the manufacture of its goods. On this point, the declaration of respondent's president submitted in support of its motion is consistent with the declaration submitted in the Canadian proceeding. In the present proceeding, respondent's president elaborated on the nature of the relationship between respondent and the foreign manufacturers. Based on the evidence of record, there is no genuine issue of material fact that respondent does not license its mark but, rather, contracts for manufacture of the goods under its mark. Nothing argued by petitioner raises a genuine issue of fact as to this. Thus, as a matter of law, respondent has not abandoned its mark due to naked licensing.
  • Evidence: Various evidence that was not found probative as to issue of abandonment.
    • Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010)
      • In particular, petitioner has failed to show that respondent has not used the mark ECSTASY for its identified products for a period of at least three consecutive years. Petitioner did testify to having checked respondent's website "on more than one occasion." Id. at 8. However, there is no evidence that he checked over a period of at least three years. To the contrary, the exhibits he submitted show printouts spanning merely a few weeks. Id. Exs. 2 (dated March 23, 2009) and 3 (dated March 25, 2009). Furthermore, as petitioner notes, the copyright date on respondent's website as of the date of the printouts reads 2002, leaving open the possibility that respondent has simply not updated its website since 2002, which would explain why its ECSTASY fragrance (with the registration claiming a first use in commerce in 2004) is not listed thereon. Respondent's identification is not limited in its channels of trade, and respondent need not market via the Internet if it chooses not to do so. Petitioner noted no other type of investigation into other possible sales channels beyond calling the listed number for respondent's corporate office, the relevance of which is questionable since clearly respondent must exist in some form, as is evident from respondent's appearance in this proceeding. As for petitioner's notice of reliance, the third-party registrations he submitted do not contain the term ECSTASY, and thus are not probative of the issue under consideration in this proceeding.
  • Case Finding: Where TTAB found usage of the mark to be permissive and controlled, there was no need to determine whether such use constitutes a "related company" under 15 USC § 1055.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Since we find Mr. Gerald Giersch's use to be permissive and controlled, we do not need to examine whether such use constitutes a "related company" under 15 USC § 1055.
Qualcomm Incorporated v. FLO Corporation, Opposition No. 91182244, (TTAB 2010) Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 (TTAB 2010) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007) Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003) Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002) Grand Total
Hornby v. TJX Companies Inc., 87 USPQ2d 1411 (TTAB 2008) 1
L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007) 1
Consolidated Cigar Corp. v. Rodriguez, 65 USPQ2d 1153 (TTAB 2002) 1
Emergency One Inc. v. American FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343 (4th Cir. 2000) 1
On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) 2
Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998) 1
Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997) 1
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660 (Fed. Cir. 1994) 1
Stetson v. Howard D. Wolf & Associates, 955 F.2d 847 (2d Cir. 1992) 1
Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991) 1
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990) 1
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) 2
Stock Pot Restaurant Inc. v. Stockpot Inc., 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) 1
Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327 (Fed. Cir. 1982) 2
Miller Brewing Company v. Oland's Breweries [1971] Limited, 548 F.2d 349, 192 USPQ 266 (CCPA 1976) 2
Basic Incorporated v. Rex, 167 USPQ 696 (TTAB 1970) 1
Saxlehner v. Eisner & Mendelsohn Co., 179 U.S. 19 (1900) 1
Grand Total 6 3 5 3 21

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.