Precedential No. 21: TTAB Orders Cancellation Of OLD SCHOOL Registrations Due To Abandonment - Intent To Sell Mark Is Not Intent To Use

• Published date: 15 August 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In an exhaustive and exhausting opinion, the Board granted petitions to cancel two registration for the mark OLD SCHOOL for various clothing items, on the ground of abandonment. The Board found that the registrant, despite claiming attempts to sell or license the mark, had discontinued use of the mark with an intent not to resume use. Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Under Section 45 of the Trademark Act, a mark shall be deemed abandoned "[w]hen its use has been discontinued with intent not to resume use. 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." [Emphasis added]. Abandonment is a question of fact; a petitioner has the burden to prove abandonment by a preponderance of the evidence.

Nonuse: The Board combed through the record evidence in great detail [the opinion includes 250 footnotes citing to the record]. It noted that Branded "failed to introduce any credible documents showing use of the OLD SCHOOL mark to identify clothing or sale of clothing." Nor was there any evidence of advertising. Respondent's testimony regarding use was unpersuasive because of its inconsistencies, contradictions, and unspecific nature. Petitioner Vans thus established nonuse of the mark since 2008, a period of more than three years and thus prima facie evidence of abandonment.

Petitioner's prima facie case of abandonment eliminates its burden of establishing the intent element of abandonment as an initial part of its case and creates a rebuttable presumption that Respondent had no intent to commence or resume use of the OLD SCHOOL trademark. See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Imperial Tobacco, 14 USPQ2d at 1393. The presumption shifts the burden to Respondent to introduce evidence that it intended to commence or resume use of its OLD SCHOOL trademark during the period of non-use. See Rivard v. Linvell, supra; Cerveceria India Inc. v. Cerveceria Centroamerica, S.A., 10 USPQ2d 1064, 1068 (TTAB 1989), aff'd, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).

Intent Not to Resume Use: A respondent, in order to prove an intent to commence or resume use, must provide evidence "with respect to either specific activities undertaken during the period of nonuse, or special circumstances which excuse...