Monday, June 26, 2017

Precedential No. 18: Finding Abandonment of Opposer's Mark, TTAB Dismisses ARMBRUSTER STAGEWAY Opposition

In an exhausting exhaustive 61-page opinion, the TTAB dismissed this Section 2(d) opposition to registration of the mark ARMBRUSTER STAGEWAY for "vehicles, namely, customized limousines," finding that opposer had abandoned its pleaded mark ARMBRUSTER/STAGEWAY for limousines, prior to applicant's constructive first use date (December 4, 2012. The Board found opposer's testimony and evidence to be riddled with inconsistencies and contradictions as to whether it ever used the mark, and totally lacking as to its intent to resume use. Executive Coach Builders, Inc. v. SPV Coach Company, Inc., Opposition No. 91212312 (June 21, 2017) [precedential] (Opinion by Judge Hightower).


Under Section 45 of the Trademark Act, a mark is deemed to be abandoned “[w]hen its use has been discontinued with intent not to resume use.” Nonuse for three consecutive years constitutes prima facie evidence of abandonment, triggering a rebuttable presumption that the mark was abandoned without intent to resume use. The party contesting the claim of abandonment must come forward with evidence of use, or with evidence of intent to resume use. The ultimate burden of persuasion, however, remains with the party claiming abandonment.

The original Armbruster/Stageway company dates back to 1966. Opposer Executive Coach purchased the ARMBRUSTER/STAGEWAY mark and other assets in 1993. Its president testified at one point that from 1993-1998 approximately 20% of the cars bore the ARMBRUSTER/STAGEWAY badge, but later testified that he was uncertain as to the number. Opposer had no documents regarding use of the mark on cars: no invoices, photographs, or customer or sales records. Its president testified at one point that opposer ran out of badges by 2011, but later stated that the company still had some badges at the time of trial, although it provided none.

Nonuse: The Board observed that the testimony of a single witness may be sufficient to establish priority, but it “should not be characterized by contradictions, inconsistencies, and indefiniteness.” Here, however, “the testimony is indefinite and internally consistent; unsupported by documentary evidence; and contradicted by the documentary evidence that is of record, as well as by the clear and consistent testimony of eight other trial witnesses.” The testimony of opposer’s president, the Board observed, was “consistent with a subjective desire to reserve a right in the ARMBRUSTER/STAGEWAY mark.” However, "[T]he Lanham Act was not intended to provide a warehouse for unused marks.”

The Board found by a preponderance of the evidence that the mark “was not used on vehicles in the ordinary course of trade after Opposer purchased the company in 1993.”

Opposer claimed that it used the subject mark in other ways in connection with custom vehicle manufacturing and sales services: in vehicle warranty manuals; on signs, plaques, and memorabilia displayed in opposer’s plant; on a trade show banner; in two domain names (armbrusterstageway.com and armbrusterstagewaylimousines.com); and in association with replacement parts.


The Board, however, found these uses to be “isolated and de minimis,” and “insufficient to constitute bona fide use of [the] mark in the ordinary course of trade.” Opposer did not contend that it took orders for ARMBRUSTER/STAGEWAY cars in association with the banner. The domain names, per se, did not identify opposer’s goods or services. The sale of unbranded replacement parts for ARMBRUSTER/STAGEWAY vehicles is “insufficient to maintain rights in the mark.” The displays in opposer’s plant merely reflect the historical use of the ARMBRUSTER/STAGEWAY mark on cars.

Therefore, the Board found that opposer presumably “abandoned the ARMBRUSTER/STAGEWAY mark through nonuse by at least 1996, that is, through nonuse for three consecutive years after Opposer apparently purchased the mark.” The burden of production shifted to opposer to produce evidence that it intended to resume use.

Intent to Resume Use: To prove that its nonuse of the mark was excusable, opposer was required to provide evidence that its activities were “those of a reasonable business with a bona fide intent to use a mark in U.S. commerce would have undertaken,” and that it planned to use the mark in the “reasonably foreseeable future.”

Here there was no evidence that opposer “developed an intent to resume commercial use of the ARMBRUSTER/STAGEWAY mark in the reasonably foreseeable future within the three-year period of nonuse from 1993 to 1996.”

Conclusion: The Board found that opposer abandoned the subject mark by 1996 and did not resume use of the mark prior to applicant’s constructive priority date of December 4, 2012.

Read comments and post your comment here.

TTABlog note: Hat tip to FOTTABlog Rebeccah Gan, applicant's counsel.

Text Copyright John L. Welch 2017.

4 Comments:

At 9:52 AM, Anonymous joe dreitler said...

I see that the Opposer whose registration was cancelled because he had zero use was represented by a law firm. There was a time even prior to 1989 when most decent trademark lawyers would tell their clients never to think about using a registration offensively without significant use, not sporadic or token use over a 20 year period. The opinion's summary of the Opposer's testimony regarding "use" of its mark is pathetic. Did anyone actually look at the evidence of use by their client before filing this Opposition or at least prepare him for his deposition? Opposer's firm not only filed an Opposition, but they took it to the end of the line and got spanked - and rightfully so.

 
At 10:58 AM, Anonymous Anonymous said...

I am curious why this case is precedential. Because Hightower wrote it? Because it was really more like federal court litigation than the normal TTAB proceeding? Because of the historic usage of Opposer's previous owner and continuing usage of old signage in plant? The most interesting thing I see is that they looked at the Opposer's other behavior for its real marks (multiple PTO registrations, consistent domain name usage, consistent branding) to show that they knew how to act as a reasonable business person for the marks that they really cared about - but they don't explicitly state why precedential.

 
At 12:59 PM, Anonymous Anonymous said...

Opposer's arguments were a stretch. No doubt. But its also true that there is something unsatisfying about this result. I can readily see a client wanting to drive forward out of indignation, knowing the slim chance of success, rather than see a competitor cash in on residual goodwill in this way.

 
At 2:40 PM, Blogger John L. Welch said...

The Board did not rely on the fact that opposer owned other registations; it just noted that they were part of the evidence.

 

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