Friday, June 27, 2008

TTAB Cancels "JONATHAN LOGAN" Clothing Registrations: Trade Name Use is not Trademark Use

Finding no evidence that Respondent used the trademark JONATHAN LOGAN for clothing since 2002, the Board granted a petition for cancellation of two registrations for that mark (one in block letters, the other in the stylized form shown below). Although Respondent One Step submitted documents displaying use of the trade name "Jonathan Logan," the Board found no basis to infer that "clothing sold by the 'Jonathan Logan' company necessarily was branded with the JONATHAN LOGAN trademark." 200 Kelsey Associates, LLC v. Delan Enterprises Inc. and One Step Up, Ltd., Cancellation No. 92044571 (June 11, 2008) [not precedential].

Petitioner 200 Kelsey filed an I-T-U application to register JONATHAN LOGAN for women's clothing, but was refused registration under Section 2(d) in light of the two registrations owned by Respondent Delan. Petitioner then filed a petition for cancellation on the ground of abandonment.

Delan assigned its rights to One Step on April 6, 2006. In response to Petitioner's interrogatories regarding use of the marks from 2000 onward, One Step stated, on behalf of respondents, that "it did not know the extent of the sales revenues and advertising expenditures associated with JONATHAN LOGAN brand clothing."

The Board found that, based upon respondents' interrogatory answers, Petitioner had made a prima facie case that there had been three consecutive years of nonuse prior to the 2006 assignment.

"Because respondents were unaware of the sales or advertising figures prior to the 2006 assignment, petitioner could not introduce into evidence respondents' annual sales and advertising records in connection with the mark. Moreover, there is no explanation why respondents do not have such information."

The next question was whether Respondents "proved that they did not discontinue use of the mark." Respondents introduced a newspaper insert from the spring of 2002 that included an advertisement for a JONATHAN LOGAN suit. Other documents included buyer forms, an invoice, a purchase order, and a computer printout of vendor payment history, all identifying "Jonathan Logan" as the vendor, but none of which showed JONATHAN LOGAN used as a trademark.

"... respondents are asking us to improperly infer that any clothing sold by the 'Jonathan Logan' company featured a label displaying the JONATHAN LOGAN trademark."

The Board found no evidence of use of the JONATHAN LOGAN trademark after April 6, 2002 (the last effective day of the spring 2002 newspaper advertisement). "In other words, there is more than three consecutive years of nonuse."

The Board concluded that Respondents' contention regarding continued use "is based on the false premise that the ... documents displaying use of the 'Jonathan Logan' trade name is analogous to trademark use. As mentioned above, the problem with respondents' position is that there is no testimony or supporting evidence that every item of clothing sold by the 'Jonathan Logan' company featured the JONATHAN LOGAN trademark."

The Board therefore granted the petition for cancellation of both registrations.

TTABlog comment: Presumably, Petitioner's application to register will now move forward to publication. What happens if and when Step Up steps up and opposes on the ground of likelihood of confusion and priority? Will Step Up's "trade name" use provide it with a solid basis for blocking registration by Petitioner?

Text Copyright John L. Welch 2008.


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