The Facts: Respondent purchased the A.W. SHUCK’S restaurant in Charleston, South Carolina in June 2015 and continued to operate it until January 2016, when it ceased using the mark because it wanted to adopt a fast casual concept. It continued to operate that restaurant under a different name.
Respondent’s sole member (John Keener) researched the fast casual concept during 2016 and hired a real estate agent to look for a new location. In 2017, Keener tried unsuccessfully to negotiate a lease in Charleston, and then found space at 66 State Street, next to the former location. During the year, he worked on menu design, signage, decor, and equipment plans. He hired an architect to prepare plans for the restaurant, but the city rejected the plans because that very old building could not have a kitchen.
In the first part of 2018, Respondent negotiated for purchase of a restaurant in Charleston County. In March, a restaurant designer was engaged and construction was resumed at the old building without a kitchen (which was available at the restaurant next door). The new restaurant, according to Keener. opened in March 2019, and in May 2019, Keener, took over another restaurant at 208 King Street in Charleston under a different legal entity, but using the name “AW Shuck’s Seafood Shack.”
The Law: Under Section 45 of the Lanham Act, a mark is deemed abandoned when “its use has been discontinued with intent not to resume such use.” Because a registration is presumed valid under Section 7(b), a party seeking cancellation bears the burden of proving abandonment by a preponderance of the evidence. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (citing W. Fla. Seafood v. Jet Rests., 31 F.3d 1122, 1125, 31 USPQ2d 1660 (Fed. Cir. 1994)).
If the party claiming abandonment proves nonuse of the mark for 3 consecutive years, a prima facie case of abandonment is established. See Section 45. “The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that he has either used the mark or that he has intended to resume use (e.g., a convincing demonstration of ‘excusable non-use’ that would negate any intent not to resume use of the mark). The burden of persuasion remains with the plaintiff to prove abandonment by a preponderance of the evidence.” Noble House Home Furnishings, 118 USPQ2d 1413, 1417 (TTAB 2016) (citing Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)).
Intent: Petitioner Peterson claimed that Respondent, after discontinuing use of the mark in January 2016, did not resume use. The Board found, based on Respondent’s own testimony, that use was not resumed until at least March 2019, more than three years later, and so Peterson was entitled to a rebuttable presumption that Respondent had abandoned the mark. The burden of production shifted to Respondent to rebut this prima facie showing by offering evidence that it discontinued use of the mark without “an intent not to resume use.” See Imperial Tobacco, 14 USPQ2d at 1393.
“In assessing evidence of a registrant’s intent to resume use in this context, the registrant’s plans “must be to resume commercial use of a mark within the ‘reasonably foreseeable future.”’ Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1198-99 (TTAB 2017) (quoting Hornby v. TJX Cos., 87 USPQ2d 1411, 1421-22 (TTAB 2008)). Evidence regarding resumption of use of the mark “may be probative of whether the registrant intended to commence use during a previous period of nonuse.” Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010).
The Board first addressed whether Respondent could rely on the 208 King Street restaurant as evidence of its intent. Although that restaurant was owned by a different legal entity, both Respondent and that entity are controlled by Mr. Keener and the new entity uses the mark with his permission and under Respondent’s control. The Board found Respondent and the new entity to be related companies, and so under Section 5 of the Lanham Act Respondent was entitled to rely on use of the mark by the new entity. See Noble House, 118 USPQ2d at 1421.
Moreover, the Board “can infer that there is an implied license” between the new entity and Respondent, even without a formal agreement. “Here, the conditions arising from Mr. Keener’s sole ownership of both companies indicates to us that the companies are related for purposes of Section 5.”
Petitioner Peterson maintained that Respondent’s intent was to use AS SHUCKS (without the periods and the apostrophe) and not the registered mark. The Board found that Respondent’s evidence supported its contention the it intended to use the apostrophe, but as to use of the periods the evidence was “slim.” The Board therefore was “unable to find that Respondent intended to continue using them mark in the exact form shown in the registration.”
The question then was whether Respondent’s intention to resume use of the mark as “AW Shuck’s” (without the periods) and subsequent use in that form at 208 King Street, constituted a continuous intention to use the registered mark (with the periods). [The Board agreed with Peterson that Respondent did not show use of the mark at the 66 State Street location, but it found that the evidence of Respondent’s efforts to put the mark into use there was probative of Respondent’s “overall efforts showing that it maintained an intent to resume use of the mark in commerce.”]
The applicable standard for evaluating whether a change to a registered mark is permissible is found in Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007): “Material alteration.” See Trademark Rules 2.72 and 2.73, 37 C.F.R. §§ 2.72 and 2.73.
A material alteration exists if the old and new formats do not create the same general commercial impression. In contrast, a change in the form of a mark does not constitute abandonment or a break in continuous use if the change neither creates a new mark nor changes the commercial impression of the old mark. Marks entirely comprised of words can sometimes be varied as to their style of lettering, size and other elements of form without resulting in a material alteration of the mark. Paris Glove at 1861.
The Board noted that “[p]unctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.14(c) (Oct. 2018).
The Board found that the omission of the periods did not effect a material alteration to the mark “because ‘AW Shuck’s’ and ‘A.W. Shuck’s’ have the same continuing commercial impression.”
Here, “A.W. Shuck’s” is an obvious play on the informal term “aw-shucks,” which means “being or marked by an unsophisticated, self-conscious, or self-effacing manner // [e.g.,] an aw-shucks grin.”124 It is written in the format of a person’s initials (A.W.) and surname (Shuck’s) in the possessive form while at the same time calling to mind the playful meaning the term would have without that punctuation. * * * Consumers who understand the meaning of the term “aw-shucks,” will likely see either manner of use as both an expression of that meaning and as a person’s name, fictional or not. Consumers who do not know the meaning of the term, perhaps a younger generation of consumers, will view either term as a person’s name. Initials are often displayed without periods. Consequently, we find that Respondent intended to use a mark that is not materially different from the registered mark. Jack Wolfskin, 116 USPQ2d at 1133.
The Board concluded that Respondent overcame the presumption of abandonment by proving that it did have an intention to resume use (i.e., it did not have an intention not to resume use) during the period of nonuse. And so the Board denied the petition for cancellation.
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TTABlogger comment: For some reason, “aw shucks!” reminds me of Mickey Rooney movies.
Text Copyright John L. Welch 2021.