Respondent’s rope-a-dope defense proved to be successful in this cancellation proceeding aimed at a registration for the mark ONEPACKET (standard form) for computer-related services. The Board concluded that petitioner Equinix failed to establish a prima facie case of abandonment. Respondent did not submit any testimony or evidence and did not file a brief. The record consisted only of circumstantial evidence of abandonment; Equinix did not take the testimony of respondent regarding its use or nonuse of the mark, and respondent did not respond to Equinix’s discovery requests. Equinix, Inc. substituted for Packet Host, Inc. v. OnePacket LLC, Cancellation No. 92069714 (July 2, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma).

The sole issue, according to the Board, was “whether Respondent abandoned its registered mark ONE PACKET by failing to use, or cease using of, the mark in the United States in connection with the services listed in its registration without an intent to resume use.” [Emphasis supplied.].

[Actually, Section 45 says “with intent not to resume such use.” Is the lack of intent to resume use the same as an intent not to resume use? I think not. Proving an intent not to resume use seems like a higher burden than proving no intent to resume use. What if the registrant has no intent one way or the other? Then registrant wins. – ed.]
Petitioner Equinix’s evidence of nonuse consisted of a visit to respondent’s address in New York City, where respondent could not be found, a copy of respondent’s website having a 2014 copyright notice and failing to list any employees or officers of respondent or provide any other indication that the mark was in use, and copies of Internet search results showing no trace of respondent other than its website. The Board was not impressed by this showing:

Although this evidence is relevant, it does not establish Respondent’s lack of use of its mark for a three-year period. While use in commerce of a service mark requires rendering the services, it does not require updates to a website, location at a specific address, or advertising in any specific venue. Abandonment is a question of fact; thus, any inference of abandonment must be based on proven fact

Under Section 45, proof of nonuse for a three-year period would have triggered a presumption of abandonment and would have shifted the burden to respondent. Equinix failed to make a prima facie showing of abandonment because it failed to prove nonuse of the subject mark.

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TTABlogger comment: At a minimum, petitioner should have moved to compel discovery responses. And, as the Board pointed out, it could have taken respondent’s testimony.

Text Copyright John L. Welch 2021.