Wednesday, March 24, 2021

QURATE Registrant Fails to Overcome Three-Year Presumption of Abandonment with Proof of Intent to Commence Use, Says TTAB

Although a registration may issue via the Madrid Protocol without use of the mark in this country, the registration is still subject to the same grounds for cancellation as registrations issued under Section 1 or Section 44(e), including abandonment. Saddlesprings, 104 USPQ2d at 1951. Here, the Board granted a petition for cancellation of a registration for the mark QURATE for computer hardware and software, and telecommunication, entertainment, and computer services, finding that Respondent Thomas Brooke never used the QURATE Mark in the United States in connection with any of the identified goods and services, and failed to rebut Petitioner’s prima facie showing of abandonment by proving an intent to commence use. Qurate Retail, Inc. v. Thomas Brooke, Cancellation No. 92069076 (March 22, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).

Petitioner alleged that Brooke never used his mark, or if he did, he stopped using it for a three-year period after the registration issued, triggering the three year presumption of abandonment under Section 45 of the Lanham Act. The presumption "shifts the burden of production to the party contesting the abandonment to submit evidence of either: (1) use of the mark during the statutory period of nonuse; or (2) activities reflecting an intent to resume (or commence) use during the nonuse period." The ultimate burden of persuasion, however, remains with the party asserting abandonment. Wirecard AG, 2020 USPQ2d 10086, at *4. “In the absence of justifiable non-use, Section 66(a) registrations which have never been used, or for which use has been discontinued with no intent to resume use, may be subject to cancellation for abandonment even if the international registration remains valid and subsisting.” Saddlesprings, 104 USPQ2d at 1952. 

Nonuse: Respondent Brooke conceded that he had not commenced actual use of the mark in the United States.

Respondent admitted [on deposition] that during the three-year period from May 12, 2015 through May 12, 2018, he did not have a single QURATE customer in the United States, he had no employees or promotional teams for QURATE in the United States, he was not registered to do business in the United States, and he had no physical presence for his business in the United States. Respondent also could not recall exact details or approximate circumstances underlying the sale, or offer for sale, of any QURATE-branded good or service in the United States.

Intent to Commence Use:  Brooke claimed that he "always maintained an intent to commercialize the QURATE brand in the United States." He traveled to San Francisco in January 2017 to meet with potential investors and made a presentation regarding the "Qurate digital platform." There was no evidence in the record that Respondent or his employees or agents ever returned to the United States in furtherance of conducting business under the QURATE mark. Nor was there any proof of business plans or continued communications showing Brooke's intention to use the QURATE Mark in U.S. commerce.

The occasional and non-prominent use of the word "qurate" on Brooke's website, which website was headed by a prominent "Q" logo, "likely would be perceived as trade name usage, or in any event, not directly associated with the registered goods and services."

Conclusion: The Board therefore found that Brooke had failed to overcome Petitioner's prima facie case of abandonment, and so it granted the petition for cancellation.

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TTABlogger comment: Another 66(a) registration runs off the use-requirement cliff.

Text Copyright John L. Welch 2021.


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