Thursday, June 11, 2020

TTAB Tosses Out CHICLETS (Chewing Gum) Abandonment Claim

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Retrobrands USA LLC petitioned for cancellation of various CHICLETS-based registrations, including Registrations Nos. 48,005 (registered 1905); 1,440,100; 1,821,567; 1,824,532; and 2,862,796, all directed to chewing gum, due to alleged abandonment. Showing once again how hard it is to prove abandonment (see my previous posts on Ross Bicycle [TTABlogged here] and My Organic Zone [TTABlogged here]), the Board denied the cancellation petition. Retrobrands USA LLC v. Intercontinental Great Brands LLC, Cancellation No. 92066647 (May 29, 2020) [not precedential] (Opinion by Judge Karen Kuhlke).

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, ordinarily, a party wishing to prove abandonment starts by producing evidence of three consecutive years of nonuse of the mark, creating a prima facie case of abandonment. If the petitioner cannot prove three consecutive years of nonuse, the “Petitioner does not have the benefit of the presumption of abandonment, [and] Petitioner retains the burden to prove both that Respondent discontinued use and that Respondent intended not to resume use.” Citing Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872 (TTAB 2010) (emphasis original) [TTABlogged here]. And if “Petitioner does not establish both nonuse and intent not to resume use, it is not necessary for Respondent to submit rebuttal testimony or other evidence.”

Petitioner Retrobrands, as its name implies, is in the business of re-launching abandoned brands. Here, after some initial diligence that it thought showed that the CHICLETS brand had lost its flavor and was abandoned, it filed an intent-to-use application in 2017 for the mark CHICLETS for chewing gum. This cancellation arose out of Retrobrands’ efforts to clear the path for its use of the mark and issuance of its own application.

Respondent, along with Mondelēz North America, Mondelēz Exports, Mondelēz International, Inc., is part of the family of companies under Mondelēz International, Inc., a multinational confectionery, food and beverage company. They are generally the successors to Kraft’s global snack and food brands, including CHICLETS. Mondelēz International, Inc. manufactures and distributes those products by its various family members.

Ominously for Retrobrands’ petition, the Board started its discussion by stating that, “CHICLETS branded gum has been sold in the United States continuously by various predecessors-in-interest since around 1900.” (Emphasis added.) The decision did not improve for Retrobrands as the Board chewed through the facts.

A large complicating factor was the interoperation between the various “Mondelēz” entities. No one contested that Mondelēz North America sold CHICLETS brand chewing gum in the U.S. until 2016 and stopped at some point during that year. But also in 2016, another Mondelēz entity, Mondelēz Exports, assessed whether to sell CHICLETS in the U.S. Ultimately, it began sales of CHICLETS in the U.S. through a third-party distributor in April 2018. With this timeline, the Board did the math and determined that, even if one accepted Retrobrands’ arguments as to nonuse, Respondent’s period of nonuse was less than three years. But the Board did accept there was some period of nonuse. The question was then whether Retrobrands could prove Respondent had an intent not to resume use of the CHICLETS mark during that period.

Retrobrands tried to make its case by focusing on Mondelēz North America’s decision to discontinue use of the mark in the U.S. in 2016 as a “dying brand,” on various other statements Mondelēz North America had made about the mark (including emails that Retrobrands allegedly received from a Mondelēz customer service representative), and on an attempt to discredit Mondelēz’s re-launch of the brand in 2018. These efforts failed.

The Board first pointed out, on the “dying brand” issue, that “evidence showing a slowing and eventual discontinuation of CHICLETS branded gum by Mondelēz North America, even for economic reasons, does not by itself show abandonment,” citing Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 227 USPQ 44, 46 (9th Cir. 1985). And here, the fact that “Mondelēz” is made up of different companies helped respondent because the Board found that even if Mondelēz North America intended to not resume use, that fact doesn’t go to whether other Mondelēz entities intended to not resume use—and one Mondelēz entity did re-start use in 2018.

The Board also largely discredited the statements Mondelēz made about its continued use—or, actually, discontinued use—of the CHICLETS mark. It found that none of the cited statements “unequivocally state that the mark will no longer be used,” especially by other Mondelēz entities.
With that, the Board found that “Petitioner ha[d] not met its burden to establish that Respondent had no intent to resume use, and therefore Petitioner ha[d] not established abandonment.”

The Board observed that because Retrobrands never made a prima facie case for Respondent to rebut, it could have ended the inquiry there. But the Board chose to also examine Respondent’s evidence that it intended to resume use.

The Board first had to gnaw through some thick-shelled evidentiary objections, including whether Respondent’s witness had sufficient personal knowledge to testify on some of the issues on which she testified. But the Board eventually accepted all of Respondent’s evidence and determined from a select few Mondelēz emails from 2016 and 2017, and Mondelēz Exports’ eventual re-launch of the CHICLETS mark in 2018, that there was enough evidence to show at least that Mondelēz Exports had an intent to resume use of the mark.

Finding that Petitioner had not made a prima facie case of abandonment, and then alternatively holding that Respondent had an intent to resume use of the CHICLETS mark, the Board denied the petition to cancel each of the CHICLETS registrations.

Read comments and post your comment here.

TTABlogger comment: Chicle is a natural gum traditionally used in making chewing gum and other products. It is collected from several species of Mesoamerican trees in the genus Manilkara, including M. zapota, M. chicle, M. staminodella, and M. bidentata. By the 1960s, most chewing gum companies had switched from using chicle to butadiene-based synthetic rubber, which was cheaper to manufacture.

Text Copyright John L. Welch 2020.


At 7:12 AM, Anonymous Bob Frank said...

It seems as if the Petitioner's claims became gummed up by the Respondent's corporate structure.


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