TTAB Denies Petition for Cancellation of FAT KATZ Registration for Failure to Prove Abandonment

Proving a negative is never easy, as this petitioner found out in its failed attempt to prove abandonment of the mark FAT KATZ (in standard character and design form) for "restaurant and bar services." Petitioner 1645 Restaurant Group alleged that Respondent Buell had allowed use of his marks (by restaurants of which Buell was part owner) without a proper license, resulting in abandonment. However, 1645 had no direct proof that a license did not exist, and its attempted inference regrding same from indirect evidence fell short. "We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants ...." 1645 Restaurant Group, Inc. v. Gregg Alan Buell, Cancellations Nos. 92080535 and 92080536 (October 27, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Initial Issues: The parties skirmished over evidentiary objections and pleading issues. Interestingly, the Board pointed out that "the document speaks for itself" or "the public records speak for themselves" is not a proper response to an allegation in a adversary's pleading: "A party 'must . . . admit or deny the allegations asserted against it by an opposing party,' Fed. R. Civ. P. 8(b)(1)(B), and a 'denial must fairly respond to the substance of the allegation.' Fed. R. Civ. P. 8(b)(2)." "An allegation--other than one relating to the amount of damages--is admitted if a responsive pleading is required and the allegation is not denied." Fed. R. Civ. P. 8(b)(6). "As a general matter, a response stating that a document 'speaks for itself' may be problematic because it often begs the question 'Exactly what does it say?'" The Board resolved the amiguities against Respondent Buell and considered his "speaks for itself" responses as admissions, and as a result Petitioner 1845 established its statutory standing.

Abandonment: 1645 Restaurant Group conceded that Buell's marks had been in use up to the time of trial by third parties in which Buell has an ownership and management interest. It described the issue before the Board as "[w]hether Registrant’s Marks have been abandoned due to nonuse by Registrant in his individual capacity and his failure to properly license the Registrant’s Marks." The Board observed that:

[I]f Respondent has never personally used the marks shown in the ’506 and ’507 Registrations, that fact alone does not prove nonuse of the marks under the first definition of abandonment if the marks were used by “related companies” under Section 5 of the Trademark Act, 15 U.S.C. § 1055. The Trademark Act creates a legal fiction that use of a registered mark under license from the registrant is the registrant’s use, and makes the registrant the de jure user of the mark even if the registrant is not the de facto user.

Since Buell's registrations enjoyed a presumption of validity, it was 1645's burden to establish abandonment by a preponderance of the evidence. "The most obvious potential source of evidence supporting Petitioner’s theories of abandonment would be deposition testimony from Respondent or the Fat Katz Restaurants regarding the circumstances surrounding the use of the involved marks."

However, 1645 offered no direct evidence regarding the "related companies" issue. Instead, it asked the Board to infer abandonment from indirect evidence, primarily in the form of Internet webpages and articles. However, its evidence did not establish "foundational facts regarding the management or operation of the Fat Katz Restaurants from which we can reasonably infer that there is no valid license between Respondent and the Fat Katz Restaurants, or that the Fat Katz Restaurants are not related companies of Respondent."

Parties that elect to try to carry their burden of proof on fact-intensive claims such as abandonment based solely on materials, such as Internet webpages, printed publications, and actual official records, that are made of record under notices of reliance run the risk that they will fail because of the limitations on the probative value of such evidence discussed above. We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants, but whether their testimony might have yielded direct evidence enabling Petitioner to prove either of its theories of abandonment "is not a subject on which we can, should or do speculate. Rather, we must take the record as [Petitioner] made it."

Conclusion: The Board found that Petitioner 1645 "did not establish a prima facie case of abandonment on either of its theories of abandonment to overcome the presumption of validity of the ’506 and ’507 Registrations." And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Reminiscent of the TV Azteca case TTABlogged here (official records showing that an establishment had lost its liquor license did not prove that it had closed).

Text Copyright John L. Welch 2025.