The Board granted a petition for cancellation of a registration for the mark SHOTTAS for clothing, video games, and entertainment services, finding that Respondent Richard Effs was not using the mark on the identified goods and services when he filed his statement of use. Effs admitted in his testimony that “everything” was on hold due to lawsuits with Petitioner Silvera relating to the “Shottas” motion picture. Norman “Cess” Silvera v. Richard Effs, Cancellation No. 92064094 (April 28 2020) [not precedential] (Opinion by Judge Christen M. English).

The evidentiary submissions by the parties were not “by the book,” but neither party objected to the other’s attachment of evidence to his brief, and each considered it of record. The Board treated this as a stipulation to the admission of the evidence.

Petitioner Silvera’s allegations of nonuse were set out as part of a fraud claim, but he did identify nonuse as a separate claim on the ESTTA cover sheet, and thus Effs had adequate notice that Silvera was pleading nonuse as well as fraud. [The Board declined to reach the fraud issue].

In order to succeed on the claim of nonuse, Silvera had to prove that Effs was not using the SHOTTAS mark in commerce as of August 19, 2013, i.e., as of Effs’ deadline to file a statement of use. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1524 (TTAB 2016) (“[T]he actual filing of a statement of use does not cut off the deadline for meeting the requirements for a statement of use” so the focus in a nonuse claim is whether the mark was in use as of the deadline to file a statement of use).

To qualify as use in commerce under Section 45 of the Lanham Act, the use must be an “open, public and notorious use such that the purchasing public is made aware of the availability of the goods [and services] under said mark and of the use of the mark as an indication of the origin of those goods [or services].” See, e.g., Mastic Inc. v. Mastic Corp., 230 USPQ 699, 701 (TTAB 1986).

As to video games, Effs admitted that he made no sales, and there was no evidence that he transported video games in commerce under the mark. [Actual sales aren’t required for trademark use – ed.]. In fact, Effs testified that “we were working towards it.”

As to clothing, Effs again stated that he had made no sales, but he had “50 to 60” t-shirts, “if not more,” printed with the SHOTTAS mark and the t-shirts, as well as hats and shorts, “were given away for promotion” in Miami, Florida to “friends, anybody that knew the [SHOTTAS] movie,” to “wear it, see what’s the response.”

The Board was unable to find that “Respondent’s distribution of a limited number of SHOTTAS t-shirts, hats and shorts in Miami, Florida had a substantial effect on interstate commerce, or was sufficiently open, public and notorious, as necessary to constitute ‘use in commerce.'” There also was no evidence that distributing product samples is typical in the clothing industry. See, e.g., Tao Licensing LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1053 (TTAB 2017). [What about the two hats sold at a church bookstore in Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1643 (Fed. Cir. 2016)? – ed.].

As to entertainment services, Effs claimed that he was involved in three film projects since January 2009, but there was no evidence that he used the mark SHOTTAS in connection with any of those projects. Purported use of the mark on a move released in 2005 was not use by Effs alone but was a collaborative effort, and in any case was too far removed from the 2013 deadline to support Effs’ statement of use. See Barbara’s Bakery, 82 USPQ2d at 1289 (finding no use in commerce where claimed use occurred “more than six years prior to the filing date of applicant’s use-based application”).

The Board therefore concluded that Effs had failed to overcome Silvera’s prima facie case of nonuse, and it granted the petition for cancellation.

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TTABlogger comment: The church’s sale of hats was at least “open an notorious,” unlike Effs’ giving out t-shirts to friends.

Text Copyright John L. Welch 2020.