Evidentiary Issues – In an attempt to demonstrate use of the mark, Registrant Century Sports submitted various specification sheets, marketing presentations, and other documents to the Board as attachments to its notice of reliance. However, the Board excluded all of this material because those types of documents do not “fall into any other category of documents that may be introduced by notice of reliance.” In other words, they were not self-authenticating.
Century Sports also attached certain documents to its brief, but here again the Board rejected the documents, applying Trademark Rule 2.122(c) which states that “an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.” (The Board also took this opportunity to reinforce the point, to all those practicing before the Board, that “[a]attaching evidence to a brief is neither a convenience, nor a courtesy.”)
Of the materials registrant submitted, the Board considered only one undated screenshot (below) showing a bike with the ROSS mark being sold on Letgo.com, as to which petitioner waived its objection:
Abandonment – Under Section 45 of the Lanham Act, a mark is considered “abandoned” when:
[I]ts use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
So a party wishing to prove abandonment must produce evidence of three consecutive years of nonuse of the mark in order to create a prima facie case of abandonment. Then, although the ultimate burden of persuasion stays with the petitioner, the “burden of production . . . shifts to the registrant to produce evidence sufficient to show use of the mark during the relevant period, or an intent to resume use.”
This shifting of burdens creates an interesting question for a petitioner: how does one produce evidence that a mark was not used for at least three consecutive years, i.e., how does one prove a negative? Here, the Petitioner Ross Bicycles relied on two key declarations from its own executives who had been in the bicycle business for many years. They testified, in effect, that no one had seen any use of the ROSS mark since at least 2007. That was enough for the Board to find that petitioner had made its prima facie case, especially “because [the testimony was] corroborated by Respondent’s failure to introduce any competent evidence establishing that Respondent used the mark ROSS for bicycles or bicycle parts during the Nonuse Period.” (Ed. – This point may be more directed to the ultimate conclusion of abandonment; it seems somewhat circular to suggest that the petitioner’s testimony was “reliable” and it had made its prima facie case because respondent did not have competent evidence of use.)
Given the Board’s exclusion of so many of its documents, Registrant Century Sports was left with a bit of a flat tire which which to rebut petitioner’s case. The Board largely discounted registrant’s interrogatory answers (which petitioner had submitted into evidence) as being “vague” and uncorroborated, discounted the Letgo screenshot as undated and hearsay, and gave “no merit” to the Section 8 & 9 declaration registrant had filed because “[s]pecimens in … the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony,” which registrant did not do. In other words, just because the prosecution file of the challenged registration is automatically of record does not mean that the statements in a declaration contained in the file are not hearsay.
The Board also considered whether Century Sports had any intent to resume use of the ROSS mark, but concluded that registrant did not “act in a way reasonable for a business with a bona fide intent to use the mark,” in large part because Century Sports could not show any steps it took concerning the mark after 2014.
In the end, the Board granted the petition to cancel based on abandonment.
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TTABlog comment: I guess one takeaway is this: if you find an abandoned trademark, you can ride off with it.
Text Copyright John L. Strand and John L. Welch 2020.