TTAB Denies Cancellation Petition for Failure to Prove Nonuse or Abandonment

The Board dismissed a petition for cancellation of a registration for the mark NUTRIVITA, in standard character form, for "dietary and nutritional supplements," on the alleged grounds of nonuse and abandonment. The Board observed: "Decisions to forego testimony and rely instead on notices of reliance alone often prove fateful, perhaps especially in nonuse/abandonment and other types of fact-intensive cases. This is such a case." Nutravita limited v. Jenny Do, Cancellation No. 92073305 (March 7, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

Petitioner relied on Internet printouts, official records, and respondent's discovery responses. Internet printouts are admissible via notice of reliance, but they "have little probative value. They are admissible to show what has been printed, not the truth of what has been printed."

The more specific problem with notice of reliance evidence in nonuse and abandonment cases is that plaintiffs often bear the burden of proving a negative − that the defendant was not using her mark or did not intend to resume its use. It is unlikely that documents admissible only for what they show on their face could establish either of these often crucial elements of nonuse/abandonment claims.

As noted, petitioner bore the burden of proof on the nonuse and abandonment claims because respondent benefits from the Section 7 presumption of validity. The CAFC has observed that "when a party must prove a negative, as in proving abandonment through nonuse, without resort to proper inferences the burdened party could be faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at 1310. Here, the record did not support the inferences that petitioner sought.

For example, the fact respondent abandoned a prior registration for NUTRAVITA in a design form was irrelevant. Likewise, that the nutravita.com website appeared to be owned by someone else was also not probative of respondent's use of her mark. The Board noted that petitioner could have explored this issue by way of a discovery deposition but chose not to do so. Or it cold have provided third-party testimony on these points.

The Board pointed to TV Azteca, S.A.B. de C.V v. Martin, 128 USPQ2d 1786 (TTAB 2018) as as illustrative of petitioner's problem. [TTABlogged here]. There, in an "expedited cancellation proceeding" the petitioner relied on certain official records in attempting to show that "Pennant East closed in 2011." The records showed that "what appeared to be a Pennant East liquor license lapsed twice and was not renewed." Not good enough, said the Board.

[e]ven if Pennant East twice lost its liquor license, that alone does not establish that the premises were shuttered, did not move elsewhere, or did not continue operating as an alcohol-free establishment or in violation of the licensing laws. Furthermore, even if the evidence could suggest that Pennant East closed in 2011, it is at best inconclusive as to whether Respondent discontinued use of his mark from March 2015 to March 2018.

The Board concluded that petitioner failed to meet its burden of proof because it did not establish nonuse or an intent not to resume use. The evidence of record simply did not support the inferences that petitioner wanted the Board to draw. 

And so, the Board denied the petition for cancellation. 

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TTABlogger comment: Note that there is no opportunity to take testimony in connection with a petition for expungement under the new rules. Perhaps one should not be to quick to forego a cancellation proceeding (and the opportunity to take depositions) in favor of the purportedly faster expungement route.

Text Copyright John L. Welch 2022.