Friday, November 10, 2017

TTAB Orders Cancellation of CROC-TAIL Registration: Nonuse and Abandonment

The Board granted a petition for cancellation of a registration for the mark CROC-TAIL & Design for “alcoholic beverages, namely, ready to drink mixed alcoholic drinks; alcoholic beverages containing more than one and two-tenth % of alcohol by volume, namely, ready to drink mixed drinks based on distilled spirits,” on the ground of abandonment and nonuse. In prior TTAB rulings in the case, the Board held that a Section 66(a) registration may be cancelled even though the International Registration is still viable (TTABlogged here), and it granted Saddle Springs' motion to add a fraud claim (TTABlogged here). SaddleSprings, Inc. v. Mad Croc Brands, Inc., Cancellation No. 92055493 (November 8, 2017) [not precedential] (Opinion by Judge Karen Kuhlke).

Respondent sells an energy drink called MAD CROC, mostly to distributors for resale in bars and restaurants. It obtained its U.S. Registration for the CROC-TAIL & Design mark on February 20, 2007. Because the registration issued under Section 66(a), the earliest date on which the three-year presumption of nonuse/abandonment may be triggered is three years after the registration date.

Mad Croc contended that, although it did not sell alcoholic beverages to the consuming public, sales of the goods were made by its licensees - i.e., bars that prepare the CROC-TAIL brand alcoholic drink - according to respondent's guidance and instructions pursuant to verbal agreements with the licensees. Furthermore, since it did not itself sell alcoholic beverages, it did not need any governmental certification or permit. Mad Croc's witness testified that Respondent does not sell any alcoholic beverages.

The Board concluded that the mark was not in use in commerce and was abandoned:

The cocktails sold at third-party bars and restaurants are not Respondent’s goods and these third parties are not related companies, as contemplated by the Trademark Act. Moreover, Respondent’s activities were clearly directed at promoting the sales of its energy drink sold under the MAD CROC mark. Finally, Respondent’s asserted activities do not evidence an intent to commence or resume use. In view of the lack of use for over three years since the date of registration and no intent to commence use, Petitioner has established its abandonment/nonuse claims.

The Board declined to reach the fraud claim.

Read comments and post your comment here.

TTABlog comment: MAD CROC is not a registered trademark, according to my search of the USPTO records. Why not?

Text Copyright John L. Welch 2017.


At 9:25 AM, Anonymous Paul Reidl said...

Thanks, John. Timely. I am a petitioner in a very similar case and the respondent is making this identical argument.


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