Ritchie
Heasley*
Coggins
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
Nguyens 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
Respondents registered mark;2 because Respondents registration stands as a bar to
registration of Petitioners marks, Petitioner has been damaged and will continue to
be damaged if Respondents 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 Respondents
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 Respondents 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 Respondents 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
Boards 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
Petitioners evidence of record includes the testimonial declaration of Petitioners
Chief Executive Officer, Nicholas Aguilar, with exhibits, concerning Petitioners bona
fide intent to use its applied-for marks;7 the testimonial declaration of Petitioners
counsel, Casey Griffith, with exhibits, concerning the requests for production of
documents Petitioner propounded to Respondent, and Respondents 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.
Respondents 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 counsels correspondence
with Petitioners counsel about responding to Petitioners 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 counsels 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, Petitioners Chief Executive Officer, Nicholas
Aguilar, attests to Petitioners 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 Petitioners
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 Petitioners 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 Respondents 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 Petitioners 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) (plaintiffs 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
Respondents registered mark. Thus, we do not rely on these in our determination that
Petitioner has established standing in this proceeding.
-5-
Cancellation No. 92066464
cert. denied, 135 S. Ct. 1401 (2015) (Cuban cigar manufacturer had standing to seek
cancellation of competitors trademark registrations); Miller v. Miller, 105 USPQ2d
1615, 1618 (TTAB 2013) (competing law firm had standing to oppose competitors
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 Respondents responses and lack of production in response to
its discovery requests. Specifically, Petitioners 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
Registrants Mark have been sold or offered for sale.
5. Produce all documents that show or reflect the use of Registrants Mark
anywhere in the United States, including the date of first use of
Registrants Mark.
6. Produce all documents that show or reflect the use of Registrants Mark
in commerce, including the date of first use of Registrants Mark in
commerce.
11. Produce any and all documents reflecting revenue received from the
sale of goods under Registrants Mark.
12. Produce documents sufficient to show the number of goods sold under
Registrants Mark.17
After some colloquy between counsel, Respondent, without objection, produced
390 pages of documents to Petitioner.18 Respondents 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
Respondents counsel are the 390 pages of documents Respondent produced,
representative samples of which are as follows:
Postcards:
19 Daniel DoKhanh decl. ¶¶ 2-7, 11 TTABVUE 5-6.
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Cancellation No. 92066464
20
Birthday post cards
20 11 TTABVUE 13-14.
-9-
Cancellation No. 92066464
21
Invoices from Apex Mailing Services, Inc. for mailing services related to
the post cards
21 11 TTABVUE 163-64.
– 10 –
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.
– 11 –
Cancellation No. 92066464
Invoices from Moulton Logistics Management to VitaStrong, Inc.
– 12 –
Cancellation No. 92066464
. . .
24
Multiple invoices trace Moulton Logistics Managements provision of services
to VitaStrong, Inc. from 2013 through 2017.25
24 11 TTABVUE 360-61.
25 11 TTABVUE 362-79.
– 13 –
Cancellation No. 92066464
Website pages
– 14 –
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.
– 15 –
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 Nguyens use of the Vitastrong
Mark in commerce during discoveryfor 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 Respondents
failure to produce documentation of use in response to Petitioners 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 Petitioners requests.
Adverse inferences may be drawn properly from insufficient responses to
28 Petitioners brief, 14 TTABVUE 7-8.
– 16 –
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 partys 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
– 17 –
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 respondents 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 respondents service of
responses to petitioners 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 petitioners
– 18 –
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 petitioners 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 respondents filing date and date of
his responses to petitioners discovery requests. Accordingly, the burden of
going forward and rebutting petitioners 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, Respondents 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 Registrants Mark in commerce, including the date of first
use of Registrants 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 Respondents 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 Registrants Mark. None were produced. Request no. 11 required
Respondent to Produce any and all documents reflecting revenue received from the
sale of goods under Registrants Mark. None were produced. Request no. 3 required
29 8 TTABVUE 17.
– 19 –
Cancellation No. 92066464
Respondent to Produce documents sufficient to show all persons to whom goods
bearing Registrants 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, Respondents 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 Commcns., Inc. v. W. Coast Entmt. 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 Respondents 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). Respondents 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.
– 20 –
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 Petitioners 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 Petitioners 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)).
– 21 –
Cancellation No. 92066464
abandoned the mark in the subject registration.
Decision: The petition to cancel Respondents Registration No. 4799824 for the
mark is granted, and the registration will be cancelled in due course.
– 22 –
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
Nguyens 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
Respondents registered mark;2 because Respondents registration stands as a bar to
registration of Petitioners marks, Petitioner has been damaged and will continue to
be damaged if Respondents 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 Respondents
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 Respondents 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 Respondents 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
Boards 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
Petitioners evidence of record includes the testimonial declaration of Petitioners
Chief Executive Officer, Nicholas Aguilar, with exhibits, concerning Petitioners bona
fide intent to use its applied-for marks;7 the testimonial declaration of Petitioners
counsel, Casey Griffith, with exhibits, concerning the requests for production of
documents Petitioner propounded to Respondent, and Respondents 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.
Respondents 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 counsels correspondence
with Petitioners counsel about responding to Petitioners 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 counsels 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, Petitioners Chief Executive Officer, Nicholas
Aguilar, attests to Petitioners 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 Petitioners
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 Petitioners 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 Respondents 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 Petitioners 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) (plaintiffs 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
Respondents 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 competitors trademark registrations); Miller v. Miller, 105 USPQ2d
1615, 1618 (TTAB 2013) (competing law firm had standing to oppose competitors
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 Respondents responses and lack of production in response to
its discovery requests. Specifically, Petitioners 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
Registrants Mark have been sold or offered for sale.
5. Produce all documents that show or reflect the use of Registrants Mark
anywhere in the United States, including the date of first use of
Registrants Mark.
6. Produce all documents that show or reflect the use of Registrants Mark
in commerce, including the date of first use of Registrants Mark in
commerce.
11. Produce any and all documents reflecting revenue received from the
sale of goods under Registrants Mark.
12. Produce documents sufficient to show the number of goods sold under
Registrants Mark.17
After some colloquy between counsel, Respondent, without objection, produced
390 pages of documents to Petitioner.18 Respondents 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
Respondents counsel are the 390 pages of documents Respondent produced,
representative samples of which are as follows:
Postcards:
19 Daniel DoKhanh 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 Managements 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 Nguyens use of the Vitastrong
Mark in commerce during discoveryfor 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 Respondents
failure to produce documentation of use in response to Petitioners 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 Petitioners requests.
Adverse inferences may be drawn properly from insufficient responses to
28 Petitioners 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 partys 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 respondents 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 respondents service of
responses to petitioners 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 petitioners
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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 petitioners 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 respondents filing date and date of
his responses to petitioners discovery requests. Accordingly, the burden of
going forward and rebutting petitioners 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, Respondents 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 Registrants Mark in commerce, including the date of first
use of Registrants 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 Respondents 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 Registrants Mark. None were produced. Request no. 11 required
Respondent to Produce any and all documents reflecting revenue received from the
sale of goods under Registrants 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 Registrants 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, Respondents 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 Commcns., Inc. v. W. Coast Entmt. 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 Respondents 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). Respondents 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 Petitioners 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 Petitioners 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 Respondents Registration No. 4799824 for the
mark is granted, and the registration will be cancelled in due course.
– 22 –