Friday, March 16, 2012

Registrant Fails To Overcome Presumption of Abandonment, TTAB Partially Cancels E-MOTION Registration

Was Registrant Rolf Strothmann moved by any emotion when he received Petitioner Alco's motion for summary judgment partially cancelling his registration for the mark E-MOTION for golf carts, shopping carts, bicycles, mail delivery carts, and various other motorized, wheeled vehicles for moving people or things? We may never know. In any case, he failed to rebut the presumption of abandonment that arose as a result of his failure to use the mark for a three-year period after registration for the vast majority of his listed goods, and so the Board partially cancelled the registration. Alco Electronics Limited v. Rolf Stothmann, Cancellation No. 92052572 (March 1, 2012) [not precedential].

Strothmann's admissions established that he made no use of his mark in the USA for any of the goods except golf carts at any time prior to June 15, 2010. The subject registration issued on March 25, 2003, so the mark was not in use for the "Extra Goods" for a period of more than seven years. Consequently, Alco invoked the presumption of abandonment found in Section 45 of the Lanham Act, focusing on the three-year period immediately following registration.

The burden then shifted to Herr Strothmann to show that he had an intent to commence use of the mark on the Extra Goods. The question was "whether Respondent has put forth sufficient evidence to at least raise a genuine dispute of material fact of intent to commence use."

Strothmann submitted a declaration stating that he planned to apply his muscle/motor technology to use in/with the Extra Goods. However, there was no documentation evidencing any activities toward that end. The patents he submitted did not concern any of the Extra Goods. His mere assertion that his plans have not been abandoned was not sufficient to excuse the period of non use or to establish his intent to commence use on the Extra Goods.

[A]n affirmative desire by registrant not to relinquish a mark is not determinative of the intent element of abandonment under the Lanham Act. Nothing in the statute entitles registrant who has formerly used [or never used] a mark to overcome a presumption of abandonment arising from subsequent no use by simply averring "intent not to abandon."Imperial Tobacco v. Philip Morris, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990).

In short, Strothmann "did not present any evidence regarding his intention to commence us of his mark on the Extra Goods for the first three-year period following registration of his mark." Therefore the Board granted Alco's motion and entered judgment against Respondent Strothmann as to the Extra Goods.

TTABlog note: At the time the petition for cancellation was filed, the subject registration was already five years old, and nonuse was no longer available as a claim to knock out the registration. So Alco relied on the abandonment claim, with its added requirement of showing an intent not to commence use.

As the Board points out in footnote 2, usually the concept of "intent to commence use" comes up in cases involving Section 44 o4 66 registrations, where use is not required prior to registration. However, it sometimes arises in Section 1 cases, like this one, where there is nonuse but the "simple claim of nonuse is time-barred" under Section 14(3).

Text Copyright John L. Welch 2012.


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