Tuesday, April 25, 2006

On Summary Judgment, TTAB Cancels "THE GOLD STANDARD" Registration Due To Abandonment

Registrant Nature's Way failed to overcome Petitioner's prima facie case of abandonment based on three years of nonuse, and so the Board issued a summary judgment cancelling a 1988 registration for the mark THE GOLD STANDARD for "vitamins and nutritional dietary supplements." Smart Choice Food Sales, Ltd. v. Nature's Way Prods., Inc., Cancellation No. 92044270 (March 29, 2006) [not citable].

Petitioner Smart Choice claimed that Nature's Way "failed to produce a single piece of evidence that the registered mark THE GOLD STANDARD was ever used in commerce." Smart Choice submitted a declaration of its President, who conducted an investigation and found no uses of the subject mark. When he called Registrant to inquire about THE GOLD STANDARD products, he was told that "no such name existed."

Nature's Way argued that the four documents it produced in discovery created a factual question that precluded summary judgment, and that use of the subject mark in 2004 and 2005 "affirmatively evidence intent to utilize the mark." In support, it provided a declaration from its counsel, asserting that the documents established use of the mark "as a secondary mark in connection with goods."

From 2005 magazine advertisement

The Board found "no genuine issue of material fact that respondent ceased using THE GOLD STANDARD sometime after 1994 for a period of no less than three consecutive years." [See Section 45: "Nonuse for three consecutive years shall be prima facie evidence of abandonment."] Registrant's discovery responses were sufficient to establish Petitioner's prima facie case.

"Irrespective of events in 2005 when, evidently, respondent may have made some use of the mark, we find that, by that time, respondent had abandoned its right to THE GOLD STANDARD mark through nonuse. *** [T]he only documentation provided by respondent showing possible use ... for a date prior to 2005 is a label with a 1994 copyright notice. The total lack of corroborating evidence of sales and use of such goods under the mark clearly establishes a prima facie case of abandonment ...." (slip op., pp. 5-6).

Furthermore, the 2005 uses of the mark, "if they were used in connection with the goods at all, represent a new and separate use of the mark" that cannot cure the prior abandonment.

Because Petitioner established a prima facie case of abandonment under Section 45, it was up to Nature's Way to rebut that presumption by producing evidence that it intended to resume use of the mark.

The Board concluded that Nature's Way had failed to produce sufficient evidence to raise a genuine issue of material fact as to its intent to resume use. It produced "no documentary evidence showing specific actions taken to plan for resumption of use but has only offered unsupported statements [of counsel] in its responsive brief regarding its continued intent."

Finally, the Board noted that Petitioner Smart Choice had not established its standing, and so Petitioner was allowed thirty days "to submit a showing that there is no genuine issue of fact as to its standing." Smart Choice did just that by providing a copy of an office action in which its own application for the mark GOLD STANDARD was refused registration under Section 2(d) in light of the subject registration. As a result, on April 17, 2006, judgment was entered in favor of Petitioner.

Copyright John L. Welch 2006.


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