Tuesday, April 20, 2021

Precedential No. 8: TTAB Orders Cancellation of "NT-MDT" Registration Due to Nonuse

In a soporific, yet precedential decision, the Board granted a petition for cancellation of a registration for the mark NT-MDT (in the design form shown below) for, inter alia, microscopes, sustaining Petitioner's claim that Registrant Irina Kozodaeva did not use the registered mark prior to expiration of the time for filing a statement of use in her underlying Section 1(b) trademark application. Although  Kozodaeva admitted that she had not used the mark, she claimed to have acquired trademark rights via several prior transactions, which would provide her with an early use date. However, her proofs were inadequate. NT-MDT LLC v. Irina Kozodaeva, 2021 USPQ2d 433 (TTAB 2021) [precedential] (Opinion by Judge Albert Zervas).

The Board noted that Ms. Kozodaeva's admission that she never used the subject mark in United States commerce "would appear to seal Petitioner's victory on the nonuse claim." However, Kozodaeva contended that she was entitled to rely on several trademark assignments that provided her with a 1999 first use date, and on that basis she could amend the dates in her registration to claim that early date and thereby overcome the nonuse problem.

The Board observed that Section 7(c) requires a showing of "good cause" for an amendment to a registration. Moreover, "clear and convincing" evidence is required to justify an amendment claiming an earlier first use date than that set forth in a registration. See Bass Pro Trademarks LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008). 

Despite Kozodaeva's violation of the applicable rules - she failed to pay the required fee and failed to submit the required verified statement - the Board chose to consider the merits of her motion. [Does that make the entire discussion of the merits mere dictum? - ed.] 

Reviewing in detail the three agreements that Kozodaeva relied upon to support her claim of a 1999 first use date, the Board found that the agreements did not establish that she had obtained rights in the subject mark. The Board therefore sustained Petitioner's claim of nonuse in commerce prior to the expiration of Respondent's period for filing a statement of use.

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TTABlogger comment: The only reason that I can think of for making this opinion precedential is the fact that the parties invoked the Board's ACR regime since the Board likes to highlight the use of ACR. The decision is so fact-based that it's hard to see what precedential value it might have.

Text Copyright John L. Welch 2021.

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