UNITED STATES PATENT AND TRADEMARK OFFICE
THIS ORDER IS NOT A Trademark Trial and Appeal Board
PRECEDENT OF THE P.O. Box 1451
TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: [email protected]

MW August 1, 2018

Cancellation No. 92066032

American Polo Association, LLC

v.

Elizabeth Scripps

Before Shaw, Hightower, and Heasley,
Administrative Trademark Judges.

By the Board:

On May 1, 2017, American Polo Association, LLC (“Petitioner”) filed a petition for

cancellation of the standard character mark POLO GIRLS for “Entertainment

services, namely, participation in the sport of polo; Organizing and conducting polo

sporting events for the purpose of fundraising; Entertainment services, namely

performing and competing in polo sports events; Entertainment in the nature of on-

going television programs in the field of polo sports events, and polo lifestyle,” in

International Class 41.1 As grounds for cancellation, Petitioner alleges (1) nonuse in

1 Registration No. 4017392 registered on the Supplemental Register on August 23, 2011.
Registrant claims April 1, 2009 as the date of first use anywhere and November 5, 2009 as
the date of first use in commerce.
Cancellation No. 92066032

commerce; (2) abandoment; and (3) fraud.2 In her answer to the petition, Elizabeth

Scripps (“Respondent”) denies the salient allegations in the petition and asserts

several affirmative defenses.

This case now comes before the Board for consideration of Petitioner’s motion

(filed February 12, 2018) for summary judgment and Respondent’s cross-motion for

summary judgment. The motions are fully briefed.

The Board presumes the parties’ familiarity with the pleadings, the history of the

proceeding, and the arguments and materials submitted in connection with the

subject motions. The Board has considered the arguments and evidence submitted in

connection with the motions, but does not repeat or discuss all of the arguments and

submissions, and does not address irrelevant arguments. Guess? IP Holder L.P. v.

Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).

In support of its motion for summary judgment, Petitioner argues that the

involved registration is void ab initio because the only three clips of audio visual

content produced in discovery by Respondent are not representative of a bona fide

ongoing television show in view of the length and content of the clips. With respect to

organizing events for the purpose of fundraising, Petitioner argues that Respondent

has not produced any evidence that shows “meaningful commercial-scale use of the

mark,” 6 TTABVUE 11, and that Respondent has declined to produce documentation

referring to any fundraising. Regarding the remaining services, namely,

2The electronically generated cover sheet for the petition for cancellation also identifies
Trademark Act Section 4, 15 U.S.C. § 1054, as a ground for cancellation. However, Section 4
merely applies the provisions of the Trademark Act to collective marks and certification
marks.

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Cancellation No. 92066032

“participation in the sport of polo” and “performing and competing in polo sports

events,” Petitioner argues that Respondent has not provided any evidence of use of

her mark in connection with the services in response to Petitioner’s discovery

requests.

With respect to the abandonment claim, Petitioner argues that Respondent did

not provide evidence of use of her mark in commerce in connection with the services

for at least three years prior to the commencement of this proceeding and that

Respondent did not produce any documentary evidence suggesting that she was still

shopping her television show during the abandonment period. Petitioner further

argues that there is no evidence of use of the involved mark to identify Respondent

as the source of the fundraising services. Petitioner asserts that, at most, the evidence

of Respondent’s activities supports common law use with respect to blogging and

providing a public awareness campaign about the sport of polo.

In her response to Petitioner’s motion for summary judgment, Respondent argues

that she has produced evidence of use of her mark in connection with each of the

services and that whether the evidence demonstrates use of the mark in commerce

under the Lanham Act is a “factual determination[ ] that must be reserved for

trial….” 8 TTABVUE 11. In support of her cross-motion for summary judgment,

Respondent argues that Petitioner cannot establish its nonuse claim as a matter of

law because Petitioner’s discovery requests only sought documents and information

prior to November 5, 2009, the claimed date of first use, not her application filing date

3
Cancellation No. 92066032

of March 3, 2011.3 In addition, Respondent asserts that she has produced evidence of

her use of the mark in connection with each of the services prior to the filing date of

the application. With respect to Petitioner’s abandonment claim, Respondent argues

that she has produced evidence of use of the mark in connection with each of the

services during Petitioner’s asserted “abandonment period.”4 Finally, Respondent

argues that Petitioner’s motion for summary judgment is moot with respect to the

fraud claim because the claim was not adequately pleaded in the petition for

cancellation.

In its combined reply in support of its motion for summary judgment and response

to Respondent’s cross-motion, Petitioner argues that Respondent’s evidence of use

prior to the filing date of the application “fall[s] short of proving use in commerce.” 11

TTABVUE 5. In addition, Petitioner argues that Respondent’s uncorroborated

assertions in her declaration supporting her motion are insufficient to refute that she

abandoned the mark.

I. The Pleadings

As an initial matter, because a party may not obtain summary judgment under

Fed. R. Civ. P. 56(a) on a claim or issue that has not been properly pleaded, we have

reviewed the pleadings to determine the sufficiency of the claims and defenses. See

Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291

3 According to the proceeding schedule in the Board’s Notice of Institution, discovery in the
proceeding closed on January 11, 2018. 2 TTABVUE 3.
4 Petitioner identifies the “Abandonment Period” as at least the three years prior to the filing

of the petition for cancellation; specifically, April 30, 2014 to April 30, 2017. Petitioner’s
motion p. 14, 6 TTABVUE 15.

4
Cancellation No. 92066032

n.2, 1292 (TTAB 2016) (applicant may not obtain summary judgment on unpleaded

defense); Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1480 (TTAB

2009).

Upon review of the petition for cancellation, we find that Petitioner has pleaded

sufficient facts which, if proved, would establish Petitioner’s standing and its claim

of nonuse. In addition, Petitioner has pleaded a legally sufficient claim of

abandonment based on nonuse of the mark for at least three consecutive years. See

Trademark Act Section 45, 15 U.S.C. § 1127. However, we find that Petitioner has

failed to plead a legally sufficient claim of fraud under Fed. R. Civ. P. 9(b) and In re

Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009). A legally sufficient

pleading of fraud requires allegations that Respondent knowingly made specific, false

representations of material fact in connection with its application with the intent of

obtaining (or maintaining) a registration to which it is otherwise not entitled. See In

re Bose Corp., 91 USPQ2d at 1941. Intent to deceive the USPTO is a required element

of a fraud claim which must be pleaded. Id. at 1942. Here, Petitioner bases its fraud

claim on an allegation that Respondent “knew or should have known that it was not

using the mark POLO GIRLS in connection with all the services identified in the

application.”5 Pursuant to the Federal Circuit’s decision in Bose, a fraud claim may

not be based on a “knew or should have known” standard. Id. at 1941. Further,

Petitioner fails to allege Respondent’s intent to deceive the USPTO into issuing the

involved registration. Finally, Petitioner has not alleged particular facts in

5 Notice of Opposition at ¶ 10, 1 TTABVUE 5.

5
Cancellation No. 92066032

accordance with Fed. R. Civ. P. 9(b) that would support the allegation that

Respondent committed fraud in the filing of the use-based application.

Because Petitioner has failed to sufficiently plead the fraud claim, Petitioner’s

motion for summary judgment on the claim is moot. See Asian & Western Classics

B.V. v. Selkow, 92 USPQ2d at 1480. Further, in view of foregoing, we sua sponte

dismiss the fraud claim from the petition for cancellation. See NSM Res. Corp. v.

Microsoft Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte

dismiss any insufficiently pleaded pleading).

Turning to Respondent’s answer, Respondent denies the salient allegations in the

petition for cancellation and asserts three “Affirmative Defenses.” Upon review of the

pleading, we find that Respondent has failed to sufficiently plead any defenses that

would prevent Petitioner from prevailing on its claims. In her First Affirmative

Defense, Respondent alleges that “any period of nonuse since March 3, 2011

constitutes excusable neglect.”6 The defense is insufficiently pleaded because it does

not include any supporting facts that would provide Petitioner with fair notice of the

basis for the defense. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292

(TTAB 1999); see also TBMP § 311.02(b) (2018) (“the pleading should include enough

detail to give the plaintiff fair notice of the basis for the defense”).

Under the Second Affirmative Defense, Respondent asserts that Petitioner is

barred by the doctrine of unclean hands because, when Petitioner filed its pleaded

application and the amendment to allege use, “Petitioner knew of Registrant’s prior

6 Answer, p. 3, 5 TTABVUE 4.

6
Cancellation No. 92066032

use of the POLO GIRLS mark in association with [the services in the registration].”7

Respondent alleges that Petitioner’s sworn declaration attesting that no other person

has the right to use the mark in commerce “constitutes a material misrepresentation

and a fraud on the Office.”8

A defense of unclean hands must be supported by specific allegations of

misconduct by plaintiff that, if proved, would prevent the plaintiff from prevailing on

its claim. See Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 5 USPQ2d

1067, 1069 (TTAB 1987). In addition, the misconduct must be related to the plaintiff’s

claim. See Tony Lama Co. v. Di Stefano, 206 USPQ 176, 179 (TTAB 1980); 6 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:48 (5th ed.

2018).

Respondent’s unclean hands defense is predicated on its assertion that Petitioner

committed fraud on the USPTO by signing the application declaration with the

knowledge of use by others. Such an allegation must be accompanied by particular

facts which, if proven, would establish that: (1) there was in fact another use of the

same or a confusingly similar mark at the time the oath was signed; (2) the other user

had legal rights superior to the applicant’s; (3) applicant knew that the other user

had rights in the mark superior to applicant’s, and either believed that a likelihood of

confusion would result from applicant’s use of its mark or had no reasonable basis for

believing otherwise; and that (4) applicant, in failing to disclose these facts to the

Patent and Trademark Office, intended to procure a registration to which it was not

7 Id.
8 Answer, pp. 4-5, 5 TTABVUE 5-6.

7
Cancellation No. 92066032

entitled. Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010);

Intellimedia Sports v. Intellimedia Corp., 43 USPQ2d 1203, 1205-06 (TTAB 1997).

In this case, Respondent has not pleaded with particularity any of the elements of

fraud based on signing the application declaration with knowledge of another use.

See Fed. R. Civ. P. 9(b). In particular, Respondent has failed to allege any facts

supporting her claim of use of a confusingly similar mark prior to Petitioner’s filing

date or her superior legal rights in the subject mark.9 Further, Respondent has failed

to plead the third element of fraud based on the application declaration. A sufficient

pleading of the third element must include particular facts which, if proven, would

establish that, as of the filing date of its pleaded application, Petitioner believed that

Respondent had superior or clearly established rights and that a likelihood of

confusion would result from Petitioner’s use of its mark. Intellimedia Sports, 43

USPQ2d at 1207.10 In view of the foregoing, we find Respondent’s unclean hands

defense insufficiently pleaded.11

9Respondent’s ownership of a registration on the Supplemental Register does not establish
proprietary rights in the mark. See Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d
1252, 1255-56 (TTAB 2012); see also In re Bush Bros. & Co., 884 F.2d 569, 12 USPQ2d 1058,
1059 n.2 (Fed. Cir. 1989) (“Registration on the Supplemental Register is not evidence of
ownership, validity, or the exclusive right to use”).
10The application verification is phrased in terms of a subjective belief; thus, fraud based on
the declaration is difficult to prove. See 6 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 31.75-76 (5th ed. 2018); see also, e.g., Daniel J. Quirk, Inc. v. Village
Car Co., 120 USPQ2d 1146, 1149 (TTAB 2016) (“Fraud will not lie against an applicant who
holds an honest, good faith belief in its right to register a mark and signs an application with
the statutorily prescribed ownership statement, which is phrased in terms of subjective
belief.”). We also note that the petition for cancellation is based on Petitioner’s claim that
Respondent did not use the mark and abandoned any rights in the mark, which is contrary
to the third element of the fraud defense.
11In her brief, Respondent also asserts that Petitioner is barred by the doctrine of unclean
hands “because Petitioner was not using its mark in connection with each of its recited

8
Cancellation No. 92066032

Finally, Respondent’s “Third Affirmative Defense” is not an actual defense but

merely an attempt to reserve the right to plead additional defenses. The assertion of

the right to put forward additional defenses or counterclaims is an improper

reservation under the Federal Rules of Civil Procedure. See FDIC v. Mahajan, 923

F. Supp. 2d 1133, 1141 (N.D. Ill. 2013) (reservation of right to add affirmative

defenses at a later date is improper under the Federal Rules). The proper way to plead

additional affirmative defenses or counterclaims is to file a motion under Fed. R. Civ.

P. 15. Id.

Because Respondent has failed to plead any legally sufficient affirmative defenses,

we sua sponte strike the defenses from the answer. See NSM Res. Corp. v. Microsoft

Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any

insufficiently pleaded pleading).

II. Standing

Standing is a threshold issue that must be pleaded and proven by the plaintiff in

every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d

1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 171 F.3d. 1092,

50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair Oil Corp. v. Kendrick, 85

USPQ2d 1032, 1037 (TTAB 2007). In order to demonstrate standing, a plaintiff must

show that it has a “real interest” in the proceeding and “a reasonable basis for his

services when it submitted its Amendment to Allege Use on June 6, 2017.” 8 TTABVUE 25.
However, in addition to not submitting any evidence to support this defense, Respondent did
not plead this defense it its answer. Moreover, even if Respondent can prove these assertions,
the defense would not defeat Petitioner’s standing. See Trademark Rule 2.76(f), 37 C.F.R. §
2.76(f) (amendment to allege use may be withdrawn prior to approval for publication).

9
Cancellation No. 92066032

belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (citing Ritchie

v. Simpson, 50 USPQ2d at 1025-26. In this case, Petitioner has submitted with its

motion a copy of its pleaded application and the Office Action refusing registration to

Petitioner based on a likelihood of confusion with Respondent’s registration.12 In view

thereof, Petitioner has established its standing to bring this proceeding. See, e.g.,

Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1532

(TTAB 2018); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB

2012) (evidence of record showing petitioner’s pending application refused

registration based on respondent’s registration).

III. Summary Judgment

Turning to the parties’ motions, summary judgment is an appropriate method of

disposing of cases in which there are no genuine disputes as to any material facts and

the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In

reviewing a motion for summary judgment, the evidentiary record and all justifiable

inferences to be drawn from the undisputed facts must be viewed in the light most

favorable to the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d

766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s

Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not resolve

disputes of material fact; we may only ascertain whether a genuine dispute regarding

a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods,

22 USPQ2d at 1544.

12 See Exhibits S and Y, 6 TTABVUE 112-18 and 6 TTABVUE 151-57.

10
Cancellation No. 92066032

A party moving for summary judgment has the burden of demonstrating a

particular fact is not disputed by citing to the record, including affidavits or

declarations, admissions or interrogatory answers; or showing that the cited

materials do not establish the absence or presence of a genuine dispute, or that the

adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P.

56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). When the

moving party has supported its motion with sufficient evidence that, if unopposed,

indicates there is no genuine dispute of material fact, the burden of production shifts

to the non-moving party to demonstrate the existence of a genuine dispute of material

fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537,

1540 (TTAB 2009).

A. Petitioner’s Motion for Summary Judgment

In support of its motion for summary judgment, Petitioner relies primarily on

Respondent’s discovery responses and document production. Petitioner submitted

copies of the discovery requests and responses, including documents produced by

Respondent, with its brief. However, as noted by Respondent, many of Petitioner’s

discovery requests are flawed in that they request information regarding

Respondent’s use the subject mark prior to the alleged date of first use in commerce,

not the application filing date.13 Further, in addition to producing some documents,

Respondent responded to each of Petitioner’s discovery requests with numerous

13 See Interrogatory Nos. 1, 8, 10, 11, 17, 18, 19, 20, 22 and 23, 6 TTABVUE 34-47.

11
Cancellation No. 92066032

objections.14 While we find Respondent’s objections improper under Fed. R. Civ. P.

33(b)(4) and 34(b)(4),15 the responses do not indicate that Respondent has provided

all information or documents in response to the requests or that Respondent cannot

produce additional evidence in defense of the claims at trial.16 See, e.g., Linville v.

Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (objections that discovery requests are,

for example, ambiguous or burdensome, are not of a nature which would lead

propounding party to believe that the requested information does not exist and party

should have filed motion to compel), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.

1998).

In view of the foregoing, we find that Petitioner, as the party moving for summary

judgment, has failed to carry its burden of demonstrating that Respondent cannot

produce admissible evidence of use of her mark prior to the filing date of the

application or during the alleged abandonment period.

B. Respondent’s Cross-Motion for Summary Judgment

In support of her cross-motion for summary judgment, Respondent submitted the

declaration of Respondent, Elizabeth Kofmehl (formerly Scripps) attesting to her use

14 See 6 TTABVUE 61-79.
15A party responding to interrogatories should either answer the interrogatory or state
specifically the grounds for the objection. In addition, it is incumbent on a party objecting to
a document request to state whether it is withholding documents based on a specified
objection. Fed. R. Civ. P. 34 Committee Notes on Rules – 2015 Amendment (“an objection to
a Rule 34 request must state whether anything is being withheld on the basis of the
objection”); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
16To the extent that Petitioner found Respondent’s responses or objections inadequate or
improper, the burden was on Petitioner to file a motion challenging the sufficiency of the
responses. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719 (TTAB 2008) (party
that receives response it believes inadequate but fails to file a motion to test sufficiency of
response, may not thereafter complain about its insufficiency).

12
Cancellation No. 92066032

of the mark in connection with the services in the registration. In addition,

Respondent has submitted Exhibits consisting of, inter alia, web page snapshots from

her social media pages and other web pages, articles from third-party publications,

press releases and advertising flyers. Initially, we note that most of the Respondent’s

supporting evidence has not been properly authenticated.17 See Trademark Rule

2.122(e), 37 C.F.R. § 2.122(e); TBMP § 528.05(e) (2018). However, Petitioner has not

objected to the evidence on the basis that it cannot be admissible at trial. Instead, in

its reply brief, Petitioner states that it “accepts as true the evidence consisting of …

documents produced by the parties … and the declaration of Elizabeth Kofmehl

(formerly Scripps), and all of the exhibits thereto, which were filed concurrently with

Petitioner’s motion and Respondent’s opposition and cross motion.” 11 TTABVUE 4.

Thus, we have considered the evidence. See also Fed. R. Civ. P. 56(c)(2) (Advisory

Committee notes) (2010 amendment) (allowing a court to consider unauthenticated

documents on summary judgment).

We turn first to Respondent’s claims of use of her mark in connection with

“entertainment services in the nature of on-going television programs in the field of

polo sports events, and polo lifestyle.” In her declaration, Respondent states the

following:

I created and produced an ongoing television program titled POLO GIRLS. The
first program was produced in Miami Florida around April of 2009 .…
I sent the POLO GIRLS program to several production companies and
networks and ultimately entered into a “created by/executive producers”
agreement with High Noon Entertainment ….

17For example, many of Respondent’s web page “snapshots” and Internet publications do not
include the date they were accessed and their source (URL). See Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).

13
Cancellation No. 92066032

In an effort to further promote the POLO GIRLS brand, and to publish
video content I have produced, I created a branded YouTube page as
“PoloGirlsSociety”.… I published the first video to my branded YouTube page
on March 2, 2011 …. An additional video was published on October 24, 2012
.… Both of these videos have remained publicly accessible since their date of
publication.
An additional television program was produced under the POLO GIRLS
mark in 2012 with a new producer.…
In January of 2014, I tried an unconventional approach in an attempt to get
television networks[’] attention for the POLO GIRLS television program by
tagging them in a Facebook post regarding my POLO GIRLS television
program, and I included a screenshot of the POLO GIRLS logo included in the
program in the posting.
…
I also produced and distributed an additional television program under the
POLO GIRLS mark to production companies during early 2015.18

Respondent has submitted screenshots of the videos she produced and screenshots of

webpage where the videos were uploaded.19 In addition, Respondent has submitted

multimedia copies of the first video produced in 2009 and the “program” produced in

2012.20

Initially, we note that Respondent attests to producing only one video and

uploading it to www.youtube.com prior to the filing date of the involved application.

The second video was “published” on the website over one and one-half years later.

In addition, Respondent does not state that any of the videos were ever broadcast by

the networks or distributed by the production companies. Upon review of the

foregoing evidence, including the copies of the videos, we find that Respondent has

18 Kofmehl Declaration, ¶¶ 5-9 and 11, 8 TTABVUE 30-31.
19 Exhibits 5, 8, 9, 10 and 12, 8 TTABVUE 56-63, 172-79 and 182-86.
20Exhibits 4 and 11, submitted on DVD. Submissions to the Board by external storage media
or devices are not permitted, but exhibits to declarations consisting of video recordings may
be transferred to DVD for submission. See Trademark Rule 2.126(a), 37 C.F.R. § 2.126(a);
TBMP §§ 106.03, 528.05(b) (2018).

14
Cancellation No. 92066032

failed to demonstrate that no genuine dispute of material fact remains regarding her

use of the mark in commerce in connection with an “ongoing television program” prior

to the application filing date or during the alleged period of abandonment.21 See, e.g.,

S. Cent. Cmty. Servs., Inc. v. Wood, Cancellation No. 92048239, 2011 WL 3871950, at

*3 (TTAB 2011) (not precedential) (postings of short video clips on the Internet did

not demonstrate use of mark in connection with an “ongoing television program”).22

With respect to services consisting of “organizing and conducting polo sporting

events for the purpose of fundraising,” Respondent attests that she “held several

events” for fundraising purposes from June, 2010 through February, 2015, including

two events prior to the application filing date.23 In addition, Respondent submitted

documents in connection with each of the events.24 We find Respondent’s statement

that she “held” fundraising events vague and unclear as to Respondent’s role in the

events. In addition, Respondent’s supporting evidence identifies POLO GIRLS as

merely participating in many of the events identified and not as the organizer of the

polo events. Upon review of Respondent’s statements and the evidence submitted in

connection therewith, we find that Respondent has failed to demonstrate that no

21 For example, the multimedia copy of the video Respondent refers to as a “television
program” (submitted as Exhibit 11) is merely 30 seconds long and appears to be a promotional
video.

22Decisions of the board not designated as precedent are not binding on the Board, but may
be cited for whatever persuasive weight to which they may be entitled. TBMP § 101.03 (2018).

23 Kofmehl Declaration, ¶ 12, 8 TTABVUE 31-32.

24See 8 TTABVUE 89, 90, 100-01, 104, 125-27, 134-35 (Exhibit 6), 200-02 (Exhibit 17), 205
(Exhibit 18), 211 (Exhibit 19), and 213 (Exhibit 20).

15
Cancellation No. 92066032

genuine disputes of material fact remain regarding Respondent’s use of the mark in

connection with “organizing and conducting” polo sporting events for the purpose of

fundraising prior to the filing date of the application and during the alleged period of

abandonment.

With regard to the remaining services in the registration, in paragraph 13 of her

declaration, Respondent attests that the POLO GIRLS polo team competed or

participated in polo sporting events under the mark on April 30, 2009, April 22, 2010

and August 6, 2010, prior to the application filing date.25 Respondent further states

that she competed in polo matches under the POLO GIRLS mark on May 30, 2014

and on July 19, 2014.26 We find Respondent’s testimony and the supporting evidence

sufficient to establish use of the mark in connection with “participation in the sport

of polo” and “performing and competing in polo sporting events” prior to the

application filing date and during the alleged abandonment period. See, e.g.,

Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979)

(oral testimony may be sufficient to establish both prior use and continuous use when

the testimony is proffered by a witness with knowledge of the facts and the testimony

is clear, convincing, consistent, and sufficiently circumstantial to convince the Board

of its probative value). Thus, the burden of production shifts to Petitioner to

demonstrate that a genuine dispute exists for trial regarding Respondent’s use of the

25 Kofmehl Dec., ¶ 13, 8 TTABVUE 32-33, 83-84, 86-89.

26 Kofmehl Dec., ¶ 13, 8 TTABVUE 34, 140-41.

16
Cancellation No. 92066032

mark in connection with the services. See Enbridge, Inc. v. Excelerate Energy LP, 92

USPQ2d at 1540.

In its reply brief, Petitioner does not question the veracity of statements made in

Respondent’s declaration.27 Instead, Petitioner attacks Respondent’s documentary

evidence as insufficient on its face to prove use in commerce. 11 TTABVUE 5. In

short, Petitioner argues that the supporting documents do not go beyond advertising

and promotion and do not show that the events ever occurred or that the services

were rendered. We find Petitioner’s arguments insufficient to demonstrate that a

genuine dispute of material fact exists for trial with respect to Respondent’s use of

the mark in connection with “entertainment services, namely, participation in the

sport of polo” and “entertainment, namely, performing and competing in polo sports

events” prior to the application filing date and during the alleged abandonment

period.

II. Decision

Based on the record herein and the applicable law, we find that, at a minimum,

genuine disputes of material fact remain with respect to Respondent’s use of the mark

prior to the application filing date and during the alleged abandonment period in

connection with “Organizing and conducting polo sporting events for the purpose of

fundraising” and “Entertainment in the nature of on-going television programs in the

field of polo sports events, and polo lifestyle.” Accordingly, Petitioner’s motion for

summary judgment and Respondent’s cross-motion for summary judgment on the

27On the contrary, as noted above, Petitioner has accepted as true the declaration of
Respondent.

17
Cancellation No. 92066032

asserted nonuse and abandonment claims are DENIED, in part, with respect to the

foregoing services.28

In addition, we find that no genuine disputes of material fact remain for trial

regarding Respondent’s use in commerce in connection with “entertainment services,

namely, participation in the sport of polo” and “entertainment, namely, performing

and competing in polo sports events” prior to the application filing date and during

the three years prior to the petition for cancellation. Accordingly, Respondent’s cross-

motion for summary judgment on the asserted claims of nonuse and abandonment is

GRANTED, in part, with respect to the services.

Proceedings are resumed. Discovery is closed. Disclosure, trial and briefing dates

are reset as follows:

Plaintiff’s Pretrial Disclosures Due 8/30/2018
Plaintiff’s 30-day Trial Period Ends 10/14/2018
Defendant’s Pretrial Disclosures Due 10/29/2018
Defendant’s 30-day Trial Period Ends 12/13/2018
Plaintiff’s Rebuttal Disclosures Due 12/28/2018
Plaintiff’s 15-day Rebuttal Period Ends 1/27/2019
Plaintiff’s Opening Brief Due 3/28/2019
Defendant’s Brief Due 4/27/2019
Plaintiff’s Reply Brief Due 5/12/2019
Request for Oral Hearing (optional) Due 5/22/2019

28 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, the evidence submitted in connection with a motion for summary judgment
or opposition thereto is of record only for consideration of that motion. Any such evidence to
be considered at final hearing must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).

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Cancellation No. 92066032

In each instance, a copy of the transcript of testimony, together with copies of

documentary exhibits, must be served on the adverse party within thirty days after

completion of the taking of testimony. Trademark Rule 2.125.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral

hearing will be set only upon request filed as provided by Trademark Rule 2.129.

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