Wednesday, December 15, 2010

TTAB Says Nevermind to Abandonment Claim in "NIRVANA" Bottled Water Cancellation

The Board denied a petition for cancellation of a registration for the mark NIRVANA for "bottled natural spring water," finding that Petitioner failed to prove its abandonment claim. Respondent did not submit any evidence or file a brief, but it was Petitioner's burden to prove either outright abandonment, or nonuse for three consecutive years to invoke the statutory presumption of abandonment, failing which Respondent bears no burden of proving use or intent to resume use. Nirvana, Inc. v. Nirvana For Health Inc., Cancellation No. 92042878 (December 1, 2010) [not precedential].

The Board first admonished Petitioner for wasting everyone's time by submitting more than 1,300 pages of documents and testimony at trial, the bulk of which were irrelevant to the question of abandonment. The Board then proceeded to toss out a number of Petitioner's documents as unauthenticated, or hearsay, or otherwise flawed.

A registration is presumed to be valid, and the party asserting abandonment must rebut this presumption by a preponderance of the evidence. It must establish, prima facie, that the registrant has discontinued use of the mark with no intent to resume use.

However, a party may establish a prima facie case of abandonment by presenting evidence that establishes nonuse of the mark for three consecutive years. That showing "creates a rebuttable presumption that the registrant has abandoned the mark without intent to resume use, and relieves the party claiming abandonment from the burden of affirmatively proving the registrant’s intent not to resume use."

Here, Petitioner wholly failed to prove its abandonment claim. It did not prove that Respondent had discontinued use with no intent to resume use, and it did not establish any three-year period of nonuse that would have created a presumption of abandonment. The evidence established only that Respondent was not using the mark at some point in July 2003, and was not using the mark on October 5, 2007, but Petitioner submitted no evidence that Respondent was not using the mark in 2001, 2002, 2004, or 2005.

Since Petitioner did not overcome the presumption of validity by establishing a three year period of nonuse, Respondent had no burden to prove that it had used the mark during that period or that it intended to resume use. [The Board noted that, had Petitioner taken appropriate testimony or served targeted discovery requests, it might have established nonuse during the relevant years.]

And so the Board dismissed the petition.

TTABlog comment: The rope-a-dope strategy employed here by Respondent is the same strategy that succeeded earlier this year in The North Face Apparel Corp. v. Gerald L. Baranzyk, Cancellation No. 92046488 (March 10, 2010) [not precedential] [TTABlogged here].

TTABlog quiz: If you were the petitioner here and were considering an appeal, what avenue would afford you an opportunity to submit additional evidence?

Text Copyright John L. Welch 2010.


At 2:16 PM, Anonymous Orrin A. Falby said...

Appeal to the district court!! If I am correct, do I get TTABLOG prize?

At 2:41 PM, Blogger John L. Welch said...

Orrin is correct! A new TTABlog stress ball is on its way!

At 5:20 PM, Anonymous Orrin said...

I am at Greenberg Traurig in the NY office. Thanks!! It would match my key floatation device thingy.

At 7:49 PM, Blogger John L. Welch said...

Orrin: you have a choice of orange or blue.

At 12:31 AM, Blogger Brand Geek said...

Thanks for the practice tip, gentlemen!

At 5:35 PM, Anonymous Orrin said...

blue wil do. thank you!!


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