My Organic Zone petitioned for cancellation of Registration No.
3,335,800 for the mark ORGANIC ZONE for various
"on-line retail store services" due to alleged
abandonment. Unlike in the recent Ross Bicycles case
[TTABlogged
here], My Organic Zone could not prove a prima
facie case of abandonment, so the Board denied the cancellation
petition. Thus, the Board answered my previous question: "how
does one produce evidence that a mark was not used for at least
three consecutive years?" Answer: not easily.
My Organic Zone v. Eric Shawgo and Michael Bast,
Cancellation No. 92068377 (April 10, 2020) (not precedential)
(Opinion by Judge Thomas W. Wellington).
Abandonment:
Under Section 45 of the Lanham Act, a mark is considered
"abandoned" when:
[I]ts use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the 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.
So a party wishing to prove abandonment must start by producing
evidence of three consecutive years of nonuse of the mark, creating
a prima facie case of abandonment. That's where this case
ended, as the Board found the "record falls far short of
establishing any period of nonuse."
The lead piece of "evidence" the Board discussed was
Registrants' interrogatory responses, which Petitioner argued
"establish Respondent (sic) has not used its mark in commerce
for many years, and still is not using its mark in commerce for the
identified services." The Board, however, reviewed the
responses and instead found that they "actually support
Respondents' contention that the registered mark has not been
abandoned and remains in use in commerce." Presenting some
relatively extensive excerpts of the responses, the Board found
that the Registrants provided details "regarding their own,
and their predecessor-in-interest's, prior and current use of
the involved mark." The Board also noted that if Petitioner
believed these answers were insufficient or inaccurate, "it
had the option of serving additional discovery to flesh out such
issues or taking the testimony of Respondents themselves," but
Petitioner apparently never did so.
The Board also quickly discounted the other evidence Petitioner
submitted via its notice of reliance, including some website
print-outs from Facebook and ICANN WHOIS. Those documents "are
only probative for what they show on their face and [the Board]
cannot rely on any statements contained within these documents for
their truth." Notably, unlike the petitioner in Ross
Bicycles, the Petitioner here did not submit any testimonial
declaration to support its case or explain the website
evidence.
Given the lack of evidence supporting any prima facie case of
abandonment, the Board denied the petition to cancel.
The TTABlog.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.