Petitioner Failed to Prove "Standing" for Cancellation of KINNEY SHOES Registration

In this clash of pro se parties, both of whom appear to be in the business of disinterring defunct  trademarks (a/k/a "zombie" marks), Petitioner Superior Brands, LLC sought to cancel a Supplemental Registration owned by Retrobrands America LLC for the word mark KINNEY SHOES for "On-line retail store services featuring high-end designer shoes, orthopedic shoes, sailing shoes, and metal tipped work boots not including dancing shoes or any dancing related apparel." Superior claimed priority and likelihood of confusion with the mark shown below, for footwear, the subject of Superior's pending i-t-u application. Unfortunately for Superior, it failed to prove its entitlement to a statutory cause of action. Superior Brands, LLC v. Retrobrands America LLC, Cancellation No. 92081356 (April 29, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The original "Kinney Shoes" was a large shoe retailer that ceased operation in the 1960s. The two combatants in this case applied to register their respective marks early in the current decade. Superior appears to have the earlier constructive use date for priority purposes

However, before reaching the substantive issue of priority and likelihood of confusion, Superior had to establish its "standing" - i.e., its entitlement to a statutory cause of action.

To satisfy its entitlement to the cause of action, the plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute; and (ii) proximate causation. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 120-37 (2014)); id. at 1305 (applying Lexmark to inter partes TTAB cases).

The zone-of-interests requirement may be satisfied by proving a real interest in cancelling the registration, and proximate causation is shown by demonstrating a reasonable belief in damage by the continued registration of the challenged mark. Id. at 1305-06.

Superior pleaded ownership of a pending intent-to-use application for its mark, which was refused registration based on a likelihood of confusion with Respondent’s registered mark. These allegations, if proven, will generally suffice to establish a plaintiff’s "standing." Superior made the appropriate allegations, but it didn't prove them.

The Board observed that a plaintiff’s pleaded pending application is not automatically of record, but may be introduced as evidence at trial by filing under notice of reliance a copy thereof showing current status and title, or through witness testimony about its ownership and status. Petitioner attached a copy of its pleaded application with its original Petition to Cancel, as well as a copy of the Office Action refusing registration of its mark. Not good enough, said the Board.

Trademark Rule 2.122(c) provides that, except for pleaded registrations, “an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.” 37 C.F.R. § 2.122(c).

Superior never submitted these documents into evidence, either by way of notice of reliance or witness testimony. "Without such evidence, Petitioner has failed to prove the underpinning allegations in the amended Petition to Cancel that would establish its entitlement to a statutory cause of action. This failure, alone, is a sufficient basis to dismiss this proceeding."

The Board gave Superior another kick in the shins: Because Superior's priority was based on its ownership of the pending trademark application, its failure to put that document into evidence meant that it couldn't prove priority. "Accordingly, Petitioner’s Section 2(d) claim fails on this basis."

And so, the Board denied the petition for cancellation.

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TTABlogger comment: Harsh. What can Superior do? In a civil action under Section 1071 for review of a Board decision, a plaintiff is entitled to introduce new evidence. Would Superior be able to overcome the Board's ruling by submitting the missing documents?

Text Copyright John L. Welch 2025.