Sale of Four Saxophones over Five-Year Period Suffices to Avoid Abandonment, Say TTAB

In this six-year old proceeding, the Board denied a petition for cancellation of a registration for the mark ADOLPHE SAX & CIE for "musical instruments" on the ground of abandonment. Petitioner relied on the presumption that a mark that is not used for a three-year period is presumed abandoned, but it "failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade." Henri Selmer Paris, S.A.S. v. Karel Goetghebeur, Cancellation No. 92074077 (September 3, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"There are two elements to a claim for abandonment: (1) nonuse; and (2) intent not to resume use." If the petitioner is able to prove that a mark was not in use for a three-year period, abandonment is presumed, and the burden shifts to the registrant to overcome that presumption by showing that he either used the mark during the statutory period or intended to resume use. [See Section 45 of the Act: "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."].

Petitioner limited its abandonment claim to the period between December 15, 2015, and April 28, 2020 (the period between the issuance of the registration and the filing of this Petition). It put "all its eggs in the 'presumption' basket," claiming that the evidence "establishes the presumption of abandonment through non-use of the mark . . . .” However, the parties stipulated that "registrant sold four saxophones identified by the mark at issue to U.S. residents from the time of the issuance of the registration of the mark until the initiation of this cancellation proceeding," and further that "these sales constitute use of the mark in commerce."

Notwithstanding this stipulation of use, Petitioner insists that the presumption still applies, arguing that these instances of use do not constitute “bona fide use of such mark made in the ordinary course of trade,” as set forth in the statutory definition of “abandonment,” because they are “de minimis, sporadic, casual, nominal, or isolated.”

Petitioner "relied heavily" on Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 WL 7274674 (TTAB 2023) [TTABlogged here], in which the Board found that Peavey's sales of a few amplifiers bearing the mark "CS" fell short of the statutory standard of “bona fide use made in the ordinary course of trade." The Board distinguished Adamson on the facts.

First, unlike in Adamson, there are invoices of Respondent’s U.S. saxophone sales. Second, in Adamson, there was evidence that the respondent stopped advertising the amplifiers with the mark, had a representative recommend another brand because the amplifiers with the mark were out of stock, and stated on its website that the amplifiers with the mark were no longer available. And third, Respondent here is an individual, as opposed to a sizeable company. What is "the ordinary course of trade" for a sizeable company is unlikely to be the same for an individual.

Here, there was "nothing that would show that Respondent’s U.S. sales were stopped or were purposefully being 'drawn-down.'" Nothing in Respondent’s deposition testimony "even vaguely intimat[ed] that Respondent’s sales were made in anything other than the ordinary course of trade." Respondent testified that his prices are posted on his website, that his media posts are intended for a worldwide audience, and that he has employees that assist him.

Respondent’s U.S. sales are small, but, critically, they’ve never stopped (as Petitioner concedes), and we do not see how they were made in anything other than the ordinary course of Respondent’s modest trade. * * * In summary, the record shows, and we find, that Respondent, at minimum, sold one saxophone in 2016 or 2017 (that invoice spans the end of the year into the new year), another in 2017, one in 2018, and one in 2019.22 There is no three-year consecutive period of nonuse in the roughly four-and-a-half-year period that Petitioner contests.

Since Petitioner failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade, it could not rely on the presumption of abandonment. And so, the Board denied the petition for cancellation.

Adolphe Sax

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TTABlogger comment: Adolphe Sax invented the saxophone in the 1840s and patented it in 1846.

Text Copyright John L. Welch 2026.