Monday, June 11, 2007

TTAB Cancels "PERFECT VODKA" Registration: Sale of a Single Bottle Was Not Sufficient Technical Trademark Use to Support Registration

The TTAB cancelled a registration for the mark VODKA PERFECT for vodka on the ground that, at the time Respondent filed its Amendment to Allege Use, it had sold only a single bottle of vodka and therefore did not have the requisite "technical trademark use" to support a registration. Connors v. Perfect Partners, Inc., Cancellation No. 92043707 (June 1, 2007) [not precedential].

In November 2000, Respondent filed an Amendment to Allege Use in its I-T-U application. The record evidence showed, however, that Respondent's assignor had sold only a single bottle of vodka prior to that filing. There were no further sales of vodka under the mark until 2005.

In addition to the single sale, Respondent relied on various activities during the 2000-2004 time period and after the single sale: it entered into an agreement with a distillery in July 2000 [note: before that A-A-U was filed], inked various agreements for marketing, supplying, and distributing (2001-2004), used the mark in presentations to distributors and potential investors (2004), and developed marketing materials and a website (2004).

The Board found that the single sale of vodka "clearly is not sufficient technical trademark use to support a registration." Moreover, Respondent's subsequent actions "do not serve to bolster that sale in such a manner to constitute use to support a registration."

The "sporadic" activities undertaken in 2000-2004 "are more in the nature of evidence to support analogous use in a priority battle," but such evidence is irrelevant here. Use analogous to trademark use "is not sufficient to establish use as a basis for an application to register."

"Respondent's 'use' simply does not rise to the level of a 'bona fide use of a mark in the ordinary course of trade.' 15 U.S.C. 1051(a). The sale of a single bottle to one retailer certainly alone does not constitute 'use,' and respondent's subsequent sporadic activities and eventual sales more that five years later do not imbue this 'sale' with the technical trademark use necessary to support registration."

The Board therefore granted the petition for cancellation.

Text Copyright John L. Welch 2007.


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