DESPACITO Registrant Defeats Section 14(6) Claim by Proving Excusable Nonuse

In what appears to be the Board's first decision regarding a Section 14(6) nonuse cancellation claim, the Board denied this petition for cancellation of a registration for the mark DESPACITO for “Alcoholic beverages, except beer; Alcoholic beverages, namely, distilled blue agave liquor; Distilled spirits.” The registration was more than four years old when the petition for cancellation was filed, and Respondent Global Brands had never used the mark in commerce for any of the identified goods. However, Global established that its nonuse was excusable. JT Spirits, LLC v. Global Brands Manufacturing, S.A. de C.V., Cancellation No. 92079052 (July 18, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Section 1046(6) of the Lanham Act, 15 U.S.C. § 1046(6), states that “A petition to cancel a registration of a mark … may … be filed … [a]t any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration."

Section 14(6) was added to the Trademark Act via the Trademark Modernization Act of 2020. The Board noted that it lacked Board precedent and any other binding case law addressing this relatively new Section. However, "the concept of excusable nonuse is not, as it frequently arises in the context of both inter partes abandonment claims and ex parte registration maintenance determinations under Trademark Act Sections 8 and 71, 15 U.S.C. §§ 1058, 1141k."

The Board then looked for guidance from the ex parte expungement procedure established by the TMA in Section 16A, which also provides for cancellation of a registration for nonuse. Section 16 A states that if the registrant establishes "excusable nonuse," the USPTO "shall not find that the registration should be cancelled under subsection (g) for any good or service for which excusable nonuse is demonstrated."

The legislative history for the ex parte nonuse exception indicates that the “circumstances that satisfy excusable nonuse are limited and must be due to special circumstances beyond the registrant’s control (e.g., trade embargo, fire or other catastrophe).” H.R. REP. NO. 116-645 (2020) (emphasis by the Board).

Global Brands argued that the COVID-19 pandemic disrupted its plans to begin exporting DESPACITO-branded products from Mexico to the U.S. and that this disruption qualifies under for an exception under Section 14(6). JT Spirits maintained that "Respondent’s nonuse was not due to COVID-19 at all, but instead resulted from Respondent’s own inaction."

[The Board found] that the COVID-19 pandemic is exactly the type of “catastrophe” that qualifies as special circumstances beyond the owner’s control that could excuse nonuse of a registered mark. However, as Petitioner aptly puts it, “the inquiry here is not whether the Covid-19 pandemic was an unforeseeable catastrophe[;] [t]he inquiry . . . is whether Registrant’s ‘nonuse is due to special circumstances that excuse such nonuse.'"

The Board plowed through the evidentiary record and found that "Respondent had plans to export its DESPACITO-branded products to the U.S., and thus commence use of its registered mark well within the three years following the mark’s registration, but ultimately could not do so because of special, temporary circumstances beyond its control."

Although Global Brands did not submit documentary evidence in support of its testimony, the Board pointed out that "a lack of documentary evidence in an inter partes matter before the TTAB is not fatal if the testimony evidence is otherwise sufficient." It concluded that Global had established that its nonuse of the DESPACITO mark on the identified goods was excusable and therefore cancellation of the registration was not warranted under Section 14(6).

JT Spirits also claimed that Global Brands had abandoned its mark, but the evidence that Global's nonuse was excusable "also serves to rebut [the] presumption of abandonment."

That is, Respondent has established that it attempted to commence use of the mark in 2020 (two years after the registration issued) but was prevented from doing so because of the COVID-19 pandemic. And the record indicates that, under these circumstances, Respondent’s activities are those that a reasonable business person with a bona fide intent to use the mark in U.S. commerce would have undertaken.

Read comments and post your comment here.

TTABlogger comment: I'm a bit surprised that this opinion was not deemed precedential. Note that for Section 14(6) nonuse, unlike abandonment, an intent to commence use is not sufficient. One must show special circumstances to excuse the nonuse. So the applicant may be lining up suppliers or trying to find licensees, but that doesn't help under 14(6). Foreign owners of a US registrationsnot based on use should be aware of this heightened risk of losing the US registration, and may want to file a new application before three years expire.

Text Copyright John L. Welch 2025.