The Board granted a petition for cancellation of four registrations for the mark GIDGET for clothing, cosmetics, jewelry, entertainment, and various other goods and services in eight classes, ruling that respondent had discontinued use of the mark with intent not to resume use. Respondent failed to show either activities or special circumstances negating or excusing its nonuse. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., Cancellation No. 92056548 (May 7, 2018) [precedential] (Opinion by Judge Peter W. Cataldo).
A mark is abandoned when “its use has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” 15 U.S.C. Section 1127.
The testimony of officers of respondent’s predecessors-in-interest and of third parties established that there was no use of the GIDGET mark from at least 2008 to 2012. Because this established a prima facie case of abandonment, the burden of coming forward and rebutting the prima facie showing fell on respondent.
To support a finding of intent to resume use, an owner “must do more than simply assert a vague, unsubstantiated intent to make use of the mark at some unspecified time in the future.” Respondent did not carry its burden.
Simply put, there is no credible evidence that Respondent or its predecessors made any use of the GIDGET mark apart from a few sporadic promotions of surfing events – which activity is not listed among the goods or services identified in the subject registrations – and vaguely described, unsuccessful attempts at licensing the GIDGET mark in connection with its numerous identified goods and services.
Respondent’s “vaguely explained attempts” to license the mark fell far short of rebutting the presumption of abandonment. All other activities of respondent and its predecessors added up to little more than attempts to secure additional investors. There was no evidence of serious negotiations toward a license agreement. “Respondent’s efforts were neither consistent nor sustained, and assertions of discussions concerning the potential use of the marks at some unknown point in the future are insufficient to show an intent to resume use.”
Quite simply, the record is devoid of any evidence showing a specific and consistent plan to resume use – to the extent Respondent ever used the GIDGET mark – during a period of at least four years from 2008 through 2012.
The Board concluded that the GIDGET mark has been abandoned with no intent to resume use. And so it granted the petition for cancellation.