Tuesday, July 13, 2010

Precedential No. 29: TTAB Dismisses "ECSTASY" Cancellation - Petitioner Proves Standing, But Not Abandonment or Fraud

After clearing the standing hurdle, Petitioner Anosh Toufig experienced the agony of defeat when the Board dismissed his petition for cancellation of a registration for the mark ECSTASY for “parfum, eau de toilette, and cologne.” The Board ruled that Petitioner’s evidence fell short of proving abandonment, and his proof of fraud was nonexistent. Anosh Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872 (TTAB 2010) [precedential].

Standing: Toufigh contended that his application to register ECSTASY for bath products was refused registration in view of the subject registration. But, the Board observed, "allegations alone do not establish standing." Toufigh failed to submit a copy of the office action, but he did testify that he filed the application. That was enough, said the Board.

[P]rior cases have found standing to be established by the fact that the petitioner's application has been refused registration on the basis of the registrant's registration. *** Nevertheless, evidence of such a refusal is not a requirement to establish standing. Rather, it is sufficient if the circumstances are such that it would be reasonable for a petitioner to believe that the existence of the respondent's registration would damage him, e.g., a reasonable belief that there is a likelihood of confusion between the marks, or that a presence on the register of the respondent's mark may hinder the petitioner in using or registering his mark.

Abandonment: Toufigh attempted to show non-use of the registered mark via his own testimony. He checked the Internet, telephoned the number on the website, and conducted a Google brand search. His conclusion: the mark was not in use.

Toufigh pointed out that Respondent did not respond to document requests. However, his motion to compel had been denied as premature, and he never renewed the motion. The Board could draw no conclusions from Respondent's failure to respond to discovery, nor from the fact that it did not submit any evidence.

In short, Toufigh failed to make a prima facie case that Respondent "has not used its mark for at least three consecutive years." There was no evidence that Toufigh checked respondent's website "over a period of at least three years." In any case, Respondent may have chosen not to market via the Internet. And Toufigh's testimony that he was unaware of a brand called ECSTASY from Respondent was not probative, since Toufigh was not qualified as an expert concerning the fragrance marketplace.

Fraud: Toufigh submitted no evidence that Respondent's mark was not in use on the day it filed its Statement of Use. Ergo, fraud not established.

TTABlog comments: Note that another Respondent has won using the rope-a-dope approach of doing nothing. This seems to be a particularly effective tack when facing abandonment and/or fraud charges. See, for example, the North Face case, TTABlogged here.

Text Copyright John L. Welch 2010.


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