Wednesday, February 15, 2017

TTAB Denies NEW YORK FAIR AND LOVELY Cancellation Petition - Abandonment not Proven

The Board denied Unilever's petition for cancellation, in whole or in part, of a registration for the mark NEW YORK FAIR AND LOVELY for "Skin soaps, skin cleansers, cosmetics," in International Class 3, and for "Medicated skin creams and medicated skin lotions," in International Class 5. Unilever claimed that respondent had abandoned the mark as to some or all of the identified goods, but Unilever failed to carry its burden of proof. Unilever PLC v. Technopharma Limited, Cancellation No. 92056654 (January 20, 2017) [not precedential].


Grounds for cancellation: Unilever argued that the registration should be cancelled in its entirety because respondent's Section 8 Declaration failed to establish continued use. The Board pointed out, however, that because respondent's registration is more than five years old, Section 1064 limits cancellation to certain enumerated grounds, and filing a faulty Section 8 Declaration is not one of them. Nor is alleged error by the Director's office in the examination of the Section 8 Declaration.

Abandonment: The Board chose to consider Unilever's claim regarding the Section 8 Declaration as a claim of abandonment. Unilever was required to show, by a preponderance of the evidence, that use of the mark "has been discontinued with intent not to resume such use." 15 U.S.C. § 1127.

Reviewing the skimpy record, the Board concluded that Unilever had failed to meet its burden of proof.

Overall, the issue of the actual cessation of use of Respondent’s mark was insufficiently developed at trial to persuade us that an abandonment occurred. The amount of documentation of Respondent’s sales is indeed scant, and Mr. Farah’s testimony is not compelling. However, the burden of demonstrating abandonment is on Petitioner. The evidence of record is consistent with modest ongoing commercial activity under the mark. Even if use of the mark on some or all of the goods was not continuous, there is evidence of record that helps refute any notion of an intention not to resume use ....

Lawful use: Unilever also contended that any use of respondent’s mark did not qualify as "lawful use" because respondent did not comply with federal labeling laws. However, this claim was not mentioned in the petition for cancellation and was "only lightly touched upon at trial." Therefore, the Board agreed with respondent that the issue was not tried by consent, and further that respondent did not have adequate notice of the claim.

In any event, the claim would fail because there had been no final determination of noncompliance by any competent court or agency regarding the sale of respondent's goods. Nor was this a per se violation of applicable law. Unilever failed to adduce the required clear and convincing evidence of a violation.

And so the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: A not very interesting soap opera.

Text Copyright John L. Welch 2017.

2 Comments:

At 11:05 PM, Blogger Unknown said...

It's a little hard to fathom how filing a faulty Section 8 would not be grounds for cancellation?

 
At 11:08 PM, Anonymous Anonymous said...

It's a little hard to fathom how filing a faulty Section 8 would not be grounds for cancellation since if a mark owner fails a Section 8 on time the mark the rights are cancelled and lost. Would any one be able to help clarify?

 

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