Food Global Innovation GP LLC v. Nguyen

This Opinion is not a
Precedent of the TTAB

Mailed: July 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Food Global Innovation GP LLC

v.

Tuong Nguyen
_____

Cancellation No. 92066464
_____

Casey Griffith and Michael Barbee of Griffith Barbee PLLC,
for Food Global Innovation GP LLC

Daniel Do-Khanh of Ng Do-Khanh PC
For Tuong Nguyen
_____

Before Ritchie, Heasley and Coggins,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Petitioner, Food Global Innovation GP LLC, petitions to cancel Respondent Tuong

Nguyen’s registration on the Principal Register of the word and design mark
Cancellation No. 92066464

(the VITASTRONG & Design mark) for “vitamins; mineral and herbal supplements;

dietary and nutritional supplements,” in International Class 5,1 on the ground of

abandonment. 15 U.S.C. §§ 1064(3), 1127.

The Petition alleges that: Petitioner filed applications to register the marks

VITAXTRONG, VX VITA XTRONG & Design, and VX VITA XTRONG, all for dietary

and nutritional supplements in International Class 5, but received Office Actions

initially refusing registration to all three marks based on likelihood of confusion with

Respondent’s registered mark;2 because Respondent’s registration stands as a bar to

registration of Petitioner’s marks, Petitioner has been damaged and will continue to

be damaged if Respondent’s mark is permitted to remain on the Principal Register;3

Respondent has redirected his website VitaStrong.com to his other website,

Gardavita.com, which does not market, sell or feature products bearing Respondent’s

VITASTRONG & Design mark; Respondent is not using the registered

VITASTRONG & Design mark, and has abandoned the mark with no intent to

resume use.4 Petitioner accordingly seeks cancellation of Respondent’s registration

on the ground of abandonment.

1 Registration No. 4799824. The application that matured to the subject Registration was
filed on March 6, 2015, based on Respondent’s claim of actual use in commerce, 15 U.S.C. §
1051(a), and the registration issued in the Principal Register on August 25, 2015. Registrant
describes the mark as “consist[ing] of the word ‘Vitastrong’ where the letter ‘V’ is depicted as
two green leaves and the letters ‘I’, ‘t’, ‘a’, ‘s’, ‘t’, ‘r’, ‘o’, ‘n’, ‘g’ are written in a blue script font
with a blue underline.” The colors green and blue and claimed as a feature of the mark.

2 Petition for Cancellation ¶¶ 1-2, 1 TTABVUE 2-3. Application Serial Nos. 87196059,
87196076, and 87203688. References to the briefs, motions and orders on appeal are to the
Board’s TTABVUE docket system.
3 Petition for Cancellation ¶ 12, 1 TTABVUE 4.
4 Petition for Cancellation ¶¶ 6, 11, 1 TTABVUE 3-4.

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Cancellation No. 92066464

In his answer, Respondent admits that he has at times redirected his website

VitaStrong.com to his other website, Gardavita.com, which does not market, sell, or

otherwise feature products bearing the subject registered VITASTRONG & Design

mark, but he otherwise denies the salient allegations of the petition.5

I. The Record

The record includes the pleadings and the file for the subject registration.6

Petitioner’s evidence of record includes the testimonial declaration of Petitioner’s

Chief Executive Officer, Nicholas Aguilar, with exhibits, concerning Petitioner’s bona

fide intent to use its applied-for marks;7 the testimonial declaration of Petitioner’s

counsel, Casey Griffith, with exhibits, concerning the requests for production of

documents Petitioner propounded to Respondent, and Respondent’s response

thereto.8 Petitioner also submitted a notice of reliance listing the exhibits attached to

its testimonial declarations,9 although this was unnecessary, given that the exhibits

were authenticated in the declarations.

Respondent’s evidence of record includes the testimonial declaration of his

5Answer ¶¶ 6, 7, 10, 11, 4 TTABVUE 2-3. The Answer also raises putative “affirmative
defenses,” which were not pursued at trial, and are therefore deemed waived. TiVo Brands
LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-01 (TTAB 2019). 4 TTABVUE 3.
6Trademark Rule 2.122(b), 37 CFR § 2.122(b). See Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (“The entire
registration file — including any evidence submitted by the applicant during prosecution — is
part of the record in a cancellation proceeding ‘without any action by the parties.”’) cited in
Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1677 (Fed. Cir.
2012).
7 8 TTABVUE 8.
8 8 TTABVUE 10-11.
9 9 TTABVUE.

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Cancellation No. 92066464

counsel, Daniel Do-Khanh, with exhibits, authenticating counsel’s correspondence

with Petitioner’s counsel about responding to Petitioner’s requests for production of

documents,10 and attaching the documents Respondent produced in response to those

requests.11 Respondent also submitted a notice of reliance listing the exhibits

attached to his counsel’s testimonial declaration,12 although this was unnecessary,

given that the exhibits were authenticated in the declaration.

Petitioner has filed a trial brief,13 and Respondent has not.

II. Standing

“A petition to cancel a registration of a mark [may] be filed as follows by any

person who believes that he is or will be damaged…(3) At any time if the registered

mark … has been abandoned….”15 U.S.C. § 1064 cited in TV Azteca, S.A.B. de C.V.

v. Martin, 128 USPQ2d 1786, 1789 (TTAB 2018). In order to meet the standing

requirement under the statute, a plaintiff need only show that it has a real interest,

i.e., a personal stake, in the outcome of the proceeding and a reasonable basis for its

belief that it will be damaged. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50

USPQ2d 1023, 1025-28 (Fed. Cir. 1999). A belief in likely damage can be shown by

establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d

943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

In this case, Petitioner has established that it has a commercial interest in using

10 11 TTABVUE 7-11.
11 11 TTABVUE 12-402.
12 10 TTABVUE.
13 14 TTABVUE.

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Cancellation No. 92066464

VITAXTRONG to offer dietary and nutritional supplements in competition with

Respondent. In his declaration, Petitioner’s Chief Executive Officer, Nicholas

Aguilar, attests to Petitioner’s use and bona fide intent to use the mark

VITAXTRONG as a brand of dietary and nutritional supplements in commerce in the

United States.14 Attached as exhibit A to the Aguilar declaration is Petitioner’s

declaration of bona fide intent to use VITAXTRONG, filed in Application Serial No.

87196059.15 “Statements made in an affidavit or declaration in the file of an

application for registration, or in the file of a registration, are not testimony on behalf

of the applicant or registrant,” Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2).

Nevertheless, since the Aguilar declaration authenticates exhibit A, we consider it

for what it is worth, as documentary corroboration of Petitioner’s good faith efforts to

register and use the mark.

The obvious similarity of the parties’ marks (VITAXTRONG and VITASTRONG

& Design) on in-part identical goods (dietary and nutritional supplements) is

sufficient to indicate that the parties are competitors. Petitioner therefore has

standing to seek cancellation of Respondent’s registration.16 See Empresa Cubana Del

Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1061-62 (Fed. Cir. 2014),

14 Aguilar decl. ¶¶ 4-9, 8 TTABVUE 5-6.
15 8 TTABVUE 8.
16 We note that the rest of Petitioner’s three application files are not made of record by
operation of law, or by introduction into the record. Id.; WeaponXPerformance Prods. Ltd. v.
Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039-40 (TTAB 2018) (plaintiff’s application
file not automatically of record). As a consequence, there is no record evidence of the Office
Actions refusing registration to those applications due to likelihood of confusion with
Respondent’s registered mark. Thus, we do not rely on these in our determination that
Petitioner has established standing in this proceeding.

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Cancellation No. 92066464

cert. denied, 135 S. Ct. 1401 (2015) (Cuban cigar manufacturer had standing to seek

cancellation of competitor’s trademark registrations); Miller v. Miller, 105 USPQ2d

1615, 1618 (TTAB 2013) (competing law firm had standing to oppose competitor’s

application).

III. Abandonment

A. Applicable Law

Under Section 45 of the Trademark Act, a mark shall be deemed to be abandoned:

When its use has been discontinued with intent not to resume such use.
Intent not to resume may be inferred from 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.

15 U.S.C. § 1127.

Since a registration is presumed valid, 15 U.S.C. § 1057(b), the party seeking its

cancellation must rebut this presumption by a preponderance of the evidence. Cold

War Museum v. Cold War Air Museum, 92 USPQ2d at 1628; W. Fla. Seafood Inc. v.

Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994). “If plaintiff

can show three consecutive years of nonuse, it has established a prima facie showing

of abandonment, creating a rebuttable presumption that the registrant has

abandoned the mark without intent to resume use. The burden of production (i.e.,

going forward) then shifts to the respondent to produce evidence that he has either

used the mark or that he has intended to resume use (e.g., a convincing

demonstration of ‘excusable non-use’ that would negate any intent not to resume use

of the mark). The burden of persuasion remains with the plaintiff to prove

abandonment by a preponderance of the evidence.” Noble House Home Furnishings,

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Cancellation No. 92066464

LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016) (citing Imperial

Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir.

1990)).

B. The Parties’ Submissions

In this case, Petitioner contends that it has established a prima facie showing of

abandonment through Respondent’s responses and lack of production in response to

its discovery requests. Specifically, Petitioner’s counsel avers in his declaration that

he propounded a request for production of documents, requesting in particular that

Respondent:

3. Produce documents sufficient to show all persons to whom goods bearing
Registrant’s Mark have been sold or offered for sale.
5. Produce all documents that show or reflect the use of Registrant’s Mark
anywhere in the United States, including the date of first use of
Registrant’s Mark.
6. Produce all documents that show or reflect the use of Registrant’s Mark
in commerce, including the date of first use of Registrant’s Mark in
commerce.
11. Produce any and all documents reflecting revenue received from the
sale of goods under Registrant’s Mark.
12. Produce documents sufficient to show the number of goods sold under
Registrant’s Mark.17
After some colloquy between counsel, Respondent, without objection, produced

390 pages of documents to Petitioner.18 Respondent’s counsel confirms that he

17 Griffith decl. ¶ 3, ex A, 8 TTABVUE 10, 17.
18 Griffith decl. ¶¶ 4-7, 8 TTABVUE 11.

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Cancellation No. 92066464

produced the documents on April 26, 2018.19 Attached to the declaration of

Respondent’s counsel are the 390 pages of documents Respondent produced,

representative samples of which are as follows:

• Postcards:

19 Daniel Do–Khanh decl. ¶¶ 2-7, 11 TTABVUE 5-6.

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Cancellation No. 92066464

20

• Birthday post cards

20 11 TTABVUE 13-14.

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Cancellation No. 92066464

21

• Invoices from Apex Mailing Services, Inc. for mailing services related to

the post cards

21 11 TTABVUE 163-64.

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Cancellation No. 92066464

22

Multiple invoices trace Apex Mailing Services’ provision of mailing services

to VitaStrong, Inc. from 2013 through 2018.23

22 11 TTABVUE 15.
23 11 TTABVUE 13-162.

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Cancellation No. 92066464

• Invoices from Moulton Logistics Management to VitaStrong, Inc.

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Cancellation No. 92066464

. . .

24

Multiple invoices trace Moulton Logistics Management’s provision of services

to VitaStrong, Inc. from 2013 through 2017.25

24 11 TTABVUE 360-61.
25 11 TTABVUE 362-79.

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Cancellation No. 92066464

• Website pages

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Cancellation No. 92066464

26

• WHOIS information on the registrant of Vitastrong.com

27

26 11 TTABVUE 380-93. No URL or date was indicated.
27 11 TTABVUE 398-402.

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Cancellation No. 92066464

Respondent submitted no testimony or evidence beyond this.

In its brief, Petitioner argues:

During discovery, Petitioner requested [Respondent] Nguyen produce
documents that show use of the Vitastrong Mark in commerce. Nguyen
produced none. And incredibly, Nguyen submitted no testimony in this
proceeding. No testimony that he is using the Vitastrong Mark. No
testimony that he ever used the Vitastrong Mark. And no testimony that
he has ever had an intent to resume use of the Vitastrong Mark. Nguyen
also submitted no admissible documentary evidence that he is using, has
ever used, or has ever had an intent to resume use of the Vitastrong Mark.
* * *
Petitioner diligently sought evidence of Nguyen’s use of the Vitastrong
Mark in commerce during discovery—for if such evidence existed, Nguyen
would be in possession. He failed to produce any. Thus, Petitioner has
established a prima facie showing of abandonment, shifting the burden to
Nguyen to produce evidence that he has either used the Vitastrong Mark
or that he has intended to resume use. But because Nguyen did not testify
and none of the documents his counsel cited are admissible, the absolute
lack of evidence makes his burden an impossible task.28

As noted, Respondent did not file a brief.

C. Analysis

In our view, the issue, as framed here, is not whether Respondent has failed to

prove use of his registered mark in commerce. The issue is whether Respondent’s

failure to produce documentation of use in response to Petitioner’s document requests

suffices to support a prima facie adverse inference of nonuse in commerce for over

three years. To answer that question, we focus not only on the documents produced,

but on the lack of documents produced in response to Petitioner’s requests.

Adverse inferences may be drawn properly from insufficient responses to

28 Petitioner’s brief, 14 TTABVUE 7-8.

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Cancellation No. 92066464

discovery requests. “A party is required to respond completely to discovery to the best

of its ability and to supplement discovery responses as soon as it becomes aware of

new information. Fed. R. Civ. P. 26(e).” Quality Candy Shoppes/Buddy Squirrel of

Wisconsin, Inc. v. Grande Foods, 90 USPQ2d 1389, 1392 (TTAB 2007). As the Board

has emphasized, “Each party and its attorney has a duty to make a good faith effort

to satisfy the discovery needs of its adversary. [TBMP § 408] The parties are also

reminded of their ongoing duty to supplement their discovery responses in a timely

manner. Fed. R. Civ. P. 26(e)(1)(A).” Hewlett Packard Enter. Dev. Lp v. Arroware

Indus., Inc., 2019 USPQ2d 158663 *12, (TTAB 2019). When a party fails to do so, on

a critical issue, central to the case, an adverse inference may properly be drawn.

“[W]hen it is within a party’s power to produce a certain kind of persuasive testimony

or documentary evidence on an urged factual finding, and it fails to do so, a tribunal

is at least permitted-perhaps even compelled-to draw the inference that that fact is

unsupported and/or untrue.” In re US Warriors Ice Hockey Program, Inc., 122

USPQ2d 1790, 1794 (TTAB 2017) quoted in Stawski v. Lawson, 129 USPQ2d 1036,

1046 (TTAB 2018). See also Tao Licensing v. Bender Consulting, 125 USPQ2d 1043,

1053 (TTAB 2017) (“The presence of business records would strengthen the case that

these transactions occurred in the ordinary course of trade, and the absence of such

records does the opposite.”).

Adverse inferences of this sort can be drawn in abandonment cases. “Especially

when a party must prove a negative, as in proving abandonment through nonuse,

without resort to proper inferences the burdened party could be faced with an

insurmountable task. The protection due the registrant is provided by requiring that

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Cancellation No. 92066464

the inference have an adequate foundation in proven fact.” Cerveceria

Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310

(Fed. Cir. 1989). In one such abandonment proceeding, Cerveceria Modelo S.A. de C.V.

v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1303 (TTAB 2000), the Board observed:

Although [Petitioner] Modelo repeatedly asked for financial records as part
of document requests, interrogatories, notices of depositions, etc., and in
spite of all the discovery disputes, motions practice, and intense litigation
in this case over the past seven years, the boxes of papers generated during
this proceeding contain no financial records for the [Respondent] Marco &
Sons enterprise as a whole, much less any overall accounting of the volume
of sales of CORONA socks, or the profitability of this particular line. In
spite or promises by respondent’s counsel that such records would be
produced during Marco & Sons’ testimony period for all relevant time
periods, they do not appear to be part of the instant record.

. . .

Throughout the seven years of this cancellation proceeding, Marco & Sons
was put on notice that it was faced with a serious allegation of
abandonment, and was provided an adequate opportunity to address this
issue. Accordingly, where the record contains suspicious documents, and
where answers given under oath seem disingenuous and are intentionally
vague or unclear, we must necessarily draw inferences adverse to
respondent.

Id. at 1303. The Board accordingly found that the petitioner had produced sufficient

evidence to make a prima facie case of abandonment, and the respondent had not

rebutted that prima facie case. Id.

In another such abandonment proceeding, ShutEmDown Sports, Inc. v. Lacy, 102

USPQ2d 1036 (TTAB 2012), the Board found:

The evidence submitted by petitioner shows that no one has purchased
goods from respondent in the five years preceding respondent’s service of
responses to petitioner’s discovery requests; respondent has no sales
receipts or other sales documents, no invoices and/or bills of service for
goods showing use of the mark for the more than three years between the
filing date of his application and the service of responses to petitioner’s

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Cancellation No. 92066464

discovery requests; no promotional materials; and no documents relating
to his first use of the SHUT IT DOWN mark.
The foregoing establishes petitioner’s prima facie case of abandonment
based on nonuse of the mark for the four ‘goods allegedly in use’ for the
more than three year period between respondent’s filing date and date of
his responses to petitioner’s discovery requests. Accordingly, the burden of
going forward and rebutting petitioner’s prima facie showing shifted to
respondent. Based on the record before us, respondent did not meet his
burden.

Id. at 1043.

Here, as in those cases, Respondent’s document production is most noteworthy for

what it omits. Request no. 6 required Respondent to “Produce all documents that

show or reflect the use of Registrant’s Mark in commerce, including the date of first

use of Registrant’s Mark in commerce.”29 A mark is deemed to be in use in commerce

on goods when “(A) it is placed in any manner on the goods or their containers or the

displays associated therewith or on the tags or labels affixed thereto, or if the nature

of the goods makes such placement impracticable, then on documents associated with

the goods or their sale, and (B) the goods are sold or transported in commerce.” 15

U.S.C. § 1127, quoted in In re Kohr Bros., Inc., 121 USPQ2d 1793, 1794 (TTAB 2017).

Yet Respondent’s document production shows neither sales nor transport under the

registered mark. Other document requests were more specific. Request no. 12

required Respondent to “Produce documents sufficient to show the number of goods

sold under Registrant’s Mark.” None were produced. Request no. 11 required

Respondent to “Produce any and all documents reflecting revenue received from the

sale of goods under Registrant’s Mark.” None were produced. Request no. 3 required

29 8 TTABVUE 17.

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Cancellation No. 92066464

Respondent to “Produce documents sufficient to show all persons to whom goods

bearing Registrant’s Mark have been sold or offered for sale.” None were produced.

The documents Respondent did produce do not compensate for his omissions. The

postcards he produced are mere advertising. “It long has been held that mere

advertising is not sufficient to show trademark use.” In re Kohr Bros., Inc., 121

USPQ2d at 1794; accord In re DePorter, 129 USPQ2d 1298, 1304 n. 18 (TTAB 2019)

(“Advertisement alone is, of course, insufficient to establish trademark use for

goods.”).30 Similarly, Respondent’s registration of a domain name and maintenance

of a website that merely provides information about goods, without providing a means

of ordering them, is also viewed as promotional or advertising material, not use in

commerce. See Brookfield Commc’ns., Inc. v. W. Coast Entm’t. Corp., 174 F.3d 1036,

50 USPQ2d 1545, 1555 (9th Cir. 1999) (mere registration of domain name does not

constitute use of trademark in commerce); In re Quantum Foods, Inc., 94 USPQ2d

1375, 1378-79 (TTAB 2010) (“However, an Internet web page that merely provides

information about the goods, but does not provide a means of ordering them, is viewed

as promotional material, which is not acceptable to show trademark use on goods. …

It long has been held that mere advertising is not sufficient to show trademark use.”)

cited in Stawski v. Lawson, 129 USPQ2d at 1045. If Respondent’s advertising yielded

30 “Material that would otherwise be considered mere advertising may be acceptable as a
specimen of use for goods if it includes a photograph of the applied-for mark appearing on . .
. packaging for the goods.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 904.04(b) (Oct. 2018). Respondent’s postcards include photographs of packaging for the
goods. It is difficult to discern whether this packaging bears the registered mark; however,
even if we could determine with certainty that the mark appears on the packaging depicted
on the postcards, Respondent introduced no evidence that the goods have been “sold or
transported in commerce.” 15 U.S.C. § 1127.

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Cancellation No. 92066464

sales, or even free distribution of his goods under the VITASTRONG & Design mark,

it was incumbent on Respondent to produce this documentation. Neither the Apex

Mailing Services nor the Moulton Logistics Management invoices establish sales or

transport of goods under the VITASTRONG & Design mark. And Respondent did not

submit any evidence or testimony that would rebut Petitioner’s prima facie showing

of abandonment.

D. Conclusion

“Trademark rights are acquired and maintained in this country through use in

commerce, that is, bona fide use of the mark made in the ordinary course of trade.

Section 45 of the Trademark Act, 15 U.S.C. § 1127.” Saddlesprings, Inc. v. Mad Croc

Brands, Inc., 104 USPQ2d 1948, 1952 (TTAB 2012). Respondent, faced with a serious

allegation of abandonment, was afforded more than adequate opportunities to

respond to Petitioner’s discovery requests, to supplement his responses, and to

adduce additional testimony or documentary evidence during his testimony period

supporting his position that he used his mark in commerce. He failed to avail himself

of those opportunities. We accordingly find, based on the preponderance of the

evidence, that Petitioner established its prima facie case of abandonment based on

three consecutive years of nonuse,31 and that Respondent has not met his burden of

rebutting that prima facie case. 15 U.S.C. § 1127. We conclude that respondent has

31The period of nonuse is measured from March 6, 2015, the date Respondent filed the use-
based application that matured into the subject registration. See Dragon Bleu (SARL) v.
Venm, LLC, 112 USPQ2d 1925, 1930 (TTAB 2014) (citing ShutEmDown Sports v. Lacy, 102
USPQ2d at 1042 (for registration issued from Section 1(a)-based application, three-year
period of nonuse measured from respondent’s filing date)).

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Cancellation No. 92066464

abandoned the mark in the subject registration.

Decision: The petition to cancel Respondent’s Registration No. 4799824 for the

mark is granted, and the registration will be cancelled in due course.

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