Friday, April 17, 2020

TTAB Denies Cancellation of ORGANIC ZONE: Petitioner Fails to Make Prima Facie Case of Abandonment

[This guest post was written by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. My Organic Zone petitioned for cancellation of Registration No. 3,335,800 for the mark ORGANIC ZONE for various “on-line retail store services” due to alleged abandonment. Unlike in the recent Ross Bicycles case [TTABlogged here], My Organic Zone could not prove a prima facie case of abandonment, so the Board denied the cancellation petition. Thus, the Board answered my previous question: “how does one produce evidence that a mark was not used for at least three consecutive years?” Answer: not easily. My Organic Zone v. Eric Shawgo and Michael Bast, Cancellation No. 92068377 (April 10, 2020) (not precedential) (Opinion by Judge Thomas W. Wellington).

Abandonment: Under Section 45 of the Lanham Act, a mark is considered “abandoned” when:

[I]ts use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

So a party wishing to prove abandonment must start by producing evidence of three consecutive years of nonuse of the mark, creating a prima facie case of abandonment. That’s where this case ended, as the Board found the “record falls far short of establishing any period of nonuse.”

The lead piece of “evidence” the Board discussed was Registrants' interrogatory responses, which Petitioner argued “establish Respondent (sic) has not used its mark in commerce for many years, and still is not using its mark in commerce for the identified services.” The Board, however, reviewed the responses and instead found that they “actually support Respondents’ contention that the registered mark has not been abandoned and remains in use in commerce.” Presenting some relatively extensive excerpts of the responses, the Board found that the Registrants provided details “regarding their own, and their predecessor-in-interest’s, prior and current use of the involved mark.” The Board also noted that if Petitioner believed these answers were insufficient or inaccurate, "it had the option of serving additional discovery to flesh out such issues or taking the testimony of Respondents themselves," but Petitioner apparently never did so.

The Board also quickly discounted the other evidence Petitioner submitted via its notice of reliance, including some website print-outs from Facebook and ICANN WHOIS. Those documents “are only probative for what they show on their face and [the Board] cannot rely on any statements contained within these documents for their truth.” Notably, unlike the petitioner in Ross Bicycles, the Petitioner here did not submit any testimonial declaration to support its case or explain the website evidence.

Given the lack of evidence supporting any prima facie case of abandonment, the Board denied the petition to cancel.

Read comments and post your comment here.

TTABlogger comment: That little venture into the Organic Zone didn't turn out well, did it?

Text Copyright John L. Strand and John L. Welch 2020.


At 10:18 AM, Anonymous Anonymous said...

[So a party wishing to prove abandonment must start by producing evidence of three consecutive years of nonuse of the mark, creating a prima facie case of abandonment.]



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