Monday, April 08, 2024

TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Speaking of proving nonuse/abandonment, here's an instructive opinion right on point. The Board granted a petition for cancellation of a registration for the mark TEEN EARTH for "entertainment in the nature of beauty pageants" on the ground of abandonment. Petitioner Carousel, owner of the registered mark MISS EARTH for identical services, carried its burden to prove nonuse of the TEEN EARTH mark for a period of more than three years with an intent not to resume use. Carousel Productions, Inc. v. Michael R. Stafford, Cancellation No. 92076712 (April 4, 2024 [not precedential] (Opinion by Judge Michael B. Adlin).

The parties filed more than 100 pages of objections, responses to objections, and replies to responses, with regard to the trial testimony and evidence. The Board observed that "[w]hile the parties’ objections may provide a great example of overkill to those searching for one, they are otherwise unhelpful." Judge Adlin pointed out that:

Fortunately, there is no need for us to rule on the parties’ many repetitive, but not outcome determinative, evidentiary objections. We are able to, inter alia: identify hearsay and apply its exceptions; determine whether witnesses have provided a “proper foundation” or sufficiently authenticated documents; assess relevance; and, more generally, apply the Federal Rules of Evidence and Trademark Rules.

Petitioner Carousel is a Philippines corporation that operates the international MISS EARTH beauty pageant. Respondent Stafford is the assignee of the subject registration, which was obtained by former U.S. franchisees of Carousel.

The Board acknowledged the difficulty a party has in trying to prove a negative:

[W]e should point out that by their nature, "nonuse claims such as Petitioner’s in this case are typically difficult or impossible to prove by direct evidence. Indeed, in a country of hundreds of millions of people and substantial, constantly churning commerce, which comprises a large portion of North America, obtaining negative evidence from, for example, each potential pageant contestant, audience member or other potential witness that could encounter the pageant services in question would not be feasible. If doing so were required, it would be essentially impossible to ever prove nonuse abandonment.

Consequently, a prima facie case of nonuse may be established inferentially based on proven facts.

Petitioner Carousel searched for but could not find any evidence of use of TEEN EARTH by the original owners of the registration or by Respondent Stafford during the three years prior to the filing of the petition for petition for cancellation (on March 15, 2021). Those owners stated that in 2018 they decided to no longer “do the TEEN EARTH pageants” and to turn them over to Stafford. The Board saw this as "about as unequivocal a statement of discontinuance of use of a mark with an intention not to resume use as there could be."

Thus, the original owners "discontinued use of the mark with an intent not to resume use shortly after filing their TEEN EARTH application that issued as the involved Registration." As Carousel pointed out "there is no other reasonable explanation as to why he would file to register TEEN EARTH [in late 2017] except to try to reserve a right to the mark to which he was not entitled and despite having no intent to resume use of the mark himself."

The burden then shifted to Stafford to rebut Carousel's prima facie case. He submitted some evidence of use of the mark TEEN EARTH in 2019 but then disavowed that evidence in his trial brief. Stafford's purported use of the mark in 2021 did not cure the abandonment that had already occurred.

And so, the Board granted the petition for cancellation:
When we consider the record in its entirety, we find that it "is consistent with a subjective desire to reserve a right in the [TEEN EARTH] mark." Exec. Coach Builders, 123 USPQ2d at 1192. That is not sufficient to overcome Petitioner’s prima facie showing of abandonment. In fact, when Respondent acquired the mark and Registration by assignment in 2021, the mark had already been abandoned, and thus the transaction was nothing more than a “naked” assignment without accompanying goodwill. Auburn Farms, 51 USPQ2d at 1441.14

Read comments and post your comment here.

TTABlogger comment: Note that petitioner also took discovery in order to ferret out the facts.

Text Copyright John L. Welch 2024.


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