Thursday, March 18, 2010

Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Petitioner North Face Apparel fell victim to Respondent Gerald L. Baranzyk's rope-a-dope approach to this cancellation proceeding involving the design mark shown below for "clothing, namely caps, shirts and jackets." Face alleged abandonment and fraud, but failed to prove either. Respondent did not file a brief, failed to get any evidence into the record, and did not answer Face's admission requests, which were thereby deemed admitted. But he still won. The North Face Apparel Corp. v. Gerald L. Baranzyk, Cancellation No. 92046488 (March 10, 2010) [not precedential].

Abandonment: North Face attempted to prove abandonment via the testimony of three investigators who swore they could not find Baranzyk's goods. However, one had looked in retail outlets, even though Baranzyk had stated in an interrogatory answer that he sold his goods by "mail, phone." The other two investigators perused online websites, but Baranzyk answered "no" to an interrogatory asking whether he promoted his goods online.

But it turns out that all this was unimportant anyway, since Baranzyk had admitted (by his failure to respond to the admission requests) that he "does not use his mark on shirts, jackets and caps." That admission request was dated May 6, 2007, and the Board treated that admission as effective through July 10, 2009, "the last day of Respondent's testimony period and therefore the last point at which respondent could have controverted that admission."

Fortunately for North Face, that covered the period when the investigators had been on the prowl, but, unfortunately for North Face, the admitted period of non-use was less than three years, and Face could not therefore rely on the three-year statutory presumption of abandonment.

North Face had no other evidence of nonuse, and so the Board ruled that it had failed to meet its burden of proof. [The Board noted that had North Face requested the right admissions (e.g., non-use year by year), it could have avoided this problem.]

Fraud: In its petition for cancellation, North Face had used the now-discredited "knew or should have known" language for its fraud claim. In its final brief, it asked the Board to strike the "should have known" part, and the Board did so. Nonetheless, Face did not prove fraud. Baranzyk filed his Section 8 declaration on April 14, 2005, and Face provided no evidence that the mark was not in use with the goods on that date.

So the fraud claim bit the dust as well.

TTABlog comment: This case is like a car wreck. You can't keep yourself from looking. But the Board's willingness to amend Face's fraud claim was interesting. Of course, the amendment allowed the Board to deny the claim substantively.

TTABlog postscript: I don't mean to be too harsh on North Face. The Board seemed to lean over backwards in ignoring Applicant's shortcomings. I'd rather face a law firm or lawyer on the other side any day, than a pro se applicant who does the absolute minimum to keep the case going.

Text Copyright John L. Welch 2010.


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