TTAB Grants Petition to Cancel STORYTELLER OVERLAND (Clothing) Registrations for Nonuse, Rejects Laches Defense

The Board granted a petition for cancellation of two registrations for the mark STORYTELLER OVERLAND, in standard character and logo forms, for various items of clothing, finding that Respondent Storyteller failed to overcome Petitioner Overland's prima facie case of nonuse. Storyteller made a half-baked attempt at a laches defense, but it was inadequately pled, was not tried by consent, and was not supported by the evidence. Overland Sheepskin Co., Inc. v. Storyteller Overland, LLC, Cancellation No. 92082396 (October 6, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Nonuse: Storyteller did not contest that it had no documentation showing sales as of the filing dates of the underlying applications (in 2018 and 2019). That was sufficient to make out a prima facie case for Petitioner Overland, shifting the burden of production onto Storyteller. [Of course, the ultimate burden to prove nonuse remained on Overland].

In rebuttal, Storyteller relied nearly exclusively on the testimony of its founder, Mr. Hunter, provided during discovery and at trial. The Board went through his testimony and Storyteller's evidence in detail, finding that his testimony was "vague and uncertain as to when Storyteller first used the marks in commerce. "[H]is testimony is liberally infused with a lot of 'would have been's' and sprinkled with a few 'probably’s.'" The "sketchy" documentation offered by Storyteller did not show the sale or interstate transport of any clothing items to the general public as of the relevant dates.

The Federal Circuit has likened assessing evidence of prior use to putting together a jigsaw puzzle, where it is often the case that, while no individual piece proves prior use, sometimes the pieces viewed together bring the prior-use picture into focus. See W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994). Here, however, there are just too many missing pieces for us to complete the puzzle the way Respondent urges us to do. Key gaps include missing documentary corroboration of Mr. Hunter’s vague and imprecise (and keenly-interested) testimony and the lack of any corroboratory testimony from the two people implicated by name in Mr. Hunter’s testimony. 

The Board concluded that Storyteller failed to overcome Petitioner Overland’s prima facie case of nonuse as of either relevant date.

Laches: Storyteller assert in its answer: "Registrant pleads the affirmative defenses of unclean hands, laches, estoppel, and acquiescence.” The Board was not happy: "That’s it. The bare recitation of the names of four equitable affirmative defenses in one short sentence is patently insufficient." "[B]y merely typing the word 'laches' in its Answer, Respondent failed to adequately plead this defense. This prevented Petitioner from obtaining fair notice of the relevant facts and circumstances underlying this defense." That "grossly insufficient" pleading alone warranted rejection of the laches defense.

Furthermore, without express or implied consent, "the Board does not allow the assertion at trial of unpleaded claims or defenses—and we consider Respondent’s one-word recitation of the word 'laches' to be the equivalent of an unpleaded defense."

Respondent said not a word about laches, defending itself only on the merits of the nonuse claim. This had the natural effect of lulling Petitioner into thinking Respondent’s one-word incantation of “laches” in its Answer—assuming Petitioner even noticed it—was a throwaway. In its reply brief—the first chance Petitioner had to confront the defense—Petitioner objected to the belated insertion of laches into the case. We therefore think it entirely unfair for Respondent to have developed the defense for the first time in its defending trial brief. We do not consider the defense to have been tried by implied consent.

Petitioner Overland, apparently out of caution, addressed the merits of the laches issue, and so the Board did too. The Board found that Overland's delay of approximately three years after the registrations issued, before filing its petition for cancellation, was not unreasonable. The Board noted that "[T]he filing of a petition to cancel a registration less than three years after issuance (May 2020) falls comfortably within the time allowed under Section 14(1)." Moreover, Storyteller was put on notice via a cease-and-desist letter in April 2022, and Overland was dealing with other infringers at the time.

The Board also found the Storyteller was not prejudiced by the delay. Storyteller argued that it "significantly invested" in the brand during the delay period, but there was no evidence that this investment involved its clothing products rather than its core camper and van business. And so, the Board saw "no economic prejudice at all, let alone economic prejudice caused by the alleged 'delay.'"

Storyteller claimed evidentiary prejudice because its witness, Mr. Hunter, would have had a better memory of events had the petition been filed earlier. The Board was unmoved.

[I]t seems much more likely to us that Mr. Hunter’s sketchy recall of events concerning clothing stems from (1) his lack of direct involvement in merchandising and (2) his instead being locked on getting Respondent’s first vehicle to the market, and not from any “loss of memory” that occurred in the less-than-three-year period between the issuance of the registration and the filing of this Petition.

Storyteller also claimed that documentary evidence was lost during the delay, but the Board again was unmoved: "So far as we can tell, no evidence connects Respondent’s alleged loss of documentation to any post-registration period of delay."

Finally, the Board observed that "[a] party asserting the defense must also convince us that the equities favor application of the defense under the circumstances." "On this front, Respondent faces a headwind: the strong public policy in ridding the Register of registrations found to be void ab initio." The Board also noted the inequity of Storyteller "surprising Petitioner by developing, in several pages of its trial brief, a defense it hadn’t mentioned since asserting the word 'laches' (lumped together with three other one-word defenses) in its answer.

Respondent offers no reasons why equity favors application of the defense in the circumstances presented here. With no equities that we can discern favoring application of laches and two circumstances disfavoring it, we find that the equities disfavor application of the defense.

And so, the Board rejected Storyteller's laches defense.

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TTABlogger comment: Another down-to-earth opinion by Judge Casagrande. BTW: clothing seems to be merely ancillary to Storyteller's main business. One wonders whether this battle was worth it?

Text Copyright John L. Welch 2026.