This Opinion is Not a
Precedent of the TTAB

Mailed: August 3, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Susie Mordoh
v.
Kelly C. Krzemien
_____

Cancellation No. 92064842

_____

Stephanie Furgang Adwar of Furgang & Adwar LLP,
for Susie Mordoh.

John V. Robinson of John V. Robinson PC,
for Kelly C. Krzemien

_____

Before Shaw, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Susie Mordoh (“Petitioner”) seeks to cancel two registrations on the Principal for

the mark FEEL THE LOVE (in standard characters) owned by Kelly C. Krzemien

(“Respondent”) for

greeting cards; stickers, in International Class 16;1 and

1Registration No. 3884228 issued on November 30, 2010 from an application that was filed
based on an intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15
Cancellation No. 92062543

caps; children’s and infants’ cloth bibs; hats; infant and
toddler one piece clothing; short-sleeved or long sleeved t-
shirts; shorts; sleepwear; sweat pants; sweat shirts; sweat
shorts; sweat suits; tops; women’s underwear; coats;
jackets, in International Class 25.2

I. Issues Before the Board

The allegations in the Amended Petition for Cancellation3 are not entirely clear,

and the parties, in their briefs, dispute what grounds have been tried and thus are

now before us. The relevant allegations in the Amended Petition for Cancellation are

as follows:

6. Petitioner seeks cancellation [of] Registration No.
3884228 pursuant to 15 U.S.C. § 1064(3) for two reasons:
(1) Defendant has not sold greeting cards for at least three
years and not since January 24, 2013 and therefore, the
mark has been abandoned as to those goods; and (2) the
application is void ab initio as she has never sold stickers
and affirmatively represented that, in fact, the mark was
used on stickers sold in commerce. Therefore such filing in

U.S.C. § 1051(b). Respondent filed her Statement of Use on September 26, 2010, and her
Section 8 Declaration of Use on November 29, 2016, which was accepted on February 7, 2017.
The registration also identifies goods in International Classes 18 and 19 that are not the
subject of this proceeding.
2Registration No. 3755548 issued on March 2, 2010 from an application that was filed based
on an intent to use the mark in commerce under Section 1(b) of the Trademark Act.
Respondent filed her Statement of Use on December 15, 2009, and her Section 8 Affidavit of
Continued Use on April 12, 2015, which has been accepted.
3Petitioner filed her original Petition for Cancellation on November 15, 2016 (1 TTABVUE),
two weeks before Respondent filed her Section 8 Declaration in Registration No. 3884228,
and Petitioner filed her Amended Petition for Cancellation (5 TTABVUE) on November 30,
2016, one day after Respondent filed said Section 8 Declaration. By order dated December 1,
2016 (7 TTABVUE), the Board accepted the Amended Petition for Cancellation as a matter
of course pursuant to Fed. R. Civ. P. 15(a)(1)(A), and noted that “The amended petition
appears to clarify that Petitioner seeks to cancel Registration No. 3755548 (a single-class
registration) and only Class 16 from Registration No. 3884228 (a multiple-class
registration).” Id. at 1, n.1. However, the Amended Petition for Cancellation does not include
allegations pertaining to Respondent’s filing of her Section 8 Declaration in Registration No.
3884228.

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Cancellation No. 92062543

Class 16 was fraudulent and the registration must be
cancelled as to Class 16.

7. Petitioner seeks cancellation of Registration No.
3755548 [pursuant to] 15 U.S.C. § 1064(3) for two reasons:
(1) Defendant has not sold caps for at least three years and
not since January 24, 2013, is not currently selling t-shirts,
and has never sold any of the other goods listed in the
identification of goods and therefore, Defendant has
abandoned the use of the mark for these goods; and (2) the
application is void ab initio in that Defendant affirmatively
represented in her application that all of the goods were in
use in commerce when all but two of the goods listed were
sold in commerce, and Defendant filed a Declaration of Use
under Section 8 pm [sic] April 12, 2015, fraudulently
representing continued use of the mark on all of the goods
in the registration when, in fact, the mark was not used on
any of the goods but t-shirts and t-shirts had not been in
continuous use. Therefore such filing was fraudulent and
the registration must be cancelled in its entirety.

Respondent filed an answer in which she denied the allegations in the foregoing

paragraphs. She also “affirmatively states that a Declaration of Use under Section 8

was timely filed for Registration No. 3884228 on November 30, 2016.” 9 TTABVUE

4, ¶ 8.

In the “SUMMARY OF ISSUES” in her brief, 16 TTABVUE 5, Petitioner asserts

that the issues are:

1. whether Defendant has abandoned the Challenged
Mark for the goods identified in her two registrations by
her failure to make use in commerce of the Challenged
Mark in connection with those goods for three years or
more; and

2. whether Defendant’s original applications for
registration and the subsequent filing of Declarations of
Use Under Section 8 [for each mark] were fraudulently
filed because there was no bona fide first use in
commerce, no use of the Challenged Mark in the

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Cancellation No. 92062543

ordinary course of trade, and no continued use to
support the Declarations of Use under Section 8.

Petitioner devoted much of her brief to arguing that Respondent never made bona

fide use of her mark in commerce for any of the goods identified in either registration,

rendering both registrations void ab initio and abandoned based on at least three

years of nonuse, and that, contrary to her Section 8 Declarations of Use, Respondent

had not made continuous use of her mark for any of the identified goods in either

registration.

In the “STATEMENT OF THE ISSUES” in her brief, Respondent specifically

objects to any attempt by Plaintiff to broaden the issues
beyond those raised in her Amended Petition to Cancel (5
TTABVUE 1-4). Any response in this brief to issues outside
those raised in the Amended Petition to Cancel does not
waive such objection. Fundamental concerns of due process
require that Plaintiff be limited to the issues raised in the
Amended Petition to Cancel. Similarly, the Defendant’s
case is circumscribed by her Answers to Interrogatories (14
TTABVUE 131-137). 17 TTABVUE 6.

Respondent then restates the issues as they are raised in paragraphs 6 and 7 in

the Amended Petition to Cancel, reproduced above.

In the “SUMMARY OF ARGUMENT IN REPLY” section of her reply brief, 18

TTABVUE 5-6, Petitioner states that the Amended Petition to Cancel “specifically

asserted” that:

1. Defendant’s [sic] abandoned the Challenged Mark as
used on greeting cards due to non-use of more than
three years;

2. Defendant’s original application is void ab initio as the
Challenged Mark was never used on stickers and
therefore, such claim of use in the original application
for registration was fraudulently made;

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Cancellation No. 92062543

3. Defendant abandoned the Challenged Mark for use on
caps due to non-use for more than three years;

4. Defendant abandoned the Challenged Mark for use on
t-shirts due to non-use;

5. Defendant abandoned the Challenged Mark as
allegedly used on all other goods listed in the Clothing
Registration due to no sales of any of the goods listed;

6. Defendant’s filing of the application for the Clothing
Registration is void ab initio due to the fact that
Defendant never used the Challenged Mark on any of
the goods, except t-shirts and caps; and

7. Defendant’s Section 8 filing for the Clothing
Registration was fraudulent in that the Challenged
Mark was not continuously used in commerce.

Petitioner contends that after discovery had closed and she had reviewed

Respondent’s evidence, she realized that Respondent

could not even support the assumption made in the
Petition to Cancel that she had ever made any bona fide
usage in commerce of the Challenged Mark as to any of the
goods, had never sold any of the goods listed in [either
registration], and had not, as sworn in her Section 8 filings,
made continuous use of the Challenged Mark for any of the
goods listed in both registrations. Therefore, Plaintiff’s
Trial Brief asserted that all of the facts established by
[testimony and evidence] prove beyond all question that
Defendant has abandoned use of the Challenged mark, if
such use was ever made in the first place. 18 TTABVUE 6.

Petitioner had ample time before trial opened to file a motion for leave to file a

second Amended Petition for Cancellation to add claims of nonuse and abandonment

with respect to all, rather than only some, of the goods identified in each of the

registrations, and to add a claim of fraud as to the Class 16 goods identified in the

Section 8 Declaration that Respondent filed in Registration No. 3884228. However,

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Cancellation No. 92062543

Petitioner failed to do so. Respondent’s objection in her brief makes clear that she

does not consent to the trial of any unpleaded issues. See Fed. R. Civ. P. 15(b).

Accordingly, we will consider only those claims that were properly pleaded and tried.

Those claims are limited to (1) nonuse only as to stickers (Registration No.

3884228),4 and (2) abandonment only as to greeting cards (Registration No. 3884228),

and caps and all clothing except t-shirts (Registration No. 3755548).5

4Petitioner’s use of the word “fraud” in connection with Respondent’s asserted nonuse does
not transform a nonuse claim into a fraud claim. In order to properly plead a claim of fraud,
a plaintiff must allege that an applicant for registration knowingly made a false, material
misrepresentation of fact in connection with the application with the intent to deceive the
United States Patent and Trademark Office, in order to obtain a registration to which it
otherwise is not entitled. In re Bose, 580 F.3d 1240, 1245, 91 USPQ2d 1938, 1941 (Fed. Cir.
2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
Petitioner’s pleading does none of these things. Moreover, fraud based on nonuse of a mark
occurs when a party knowingly, and with intent to deceive the USPTO, represents that it is
using the mark in connection with goods or services, when in fact it is not. See, e.g., Harry
Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1432 (TTAB 2014);
ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1044 (TTAB 2012).
Petitioner’s nonuse claim for the Class 25 goods identified in Registration No. 3755548 is
based on an allegation that “Defendant affirmatively represented in her application that all
of the goods were in use in commerce when all but two of the goods listed were sold in
commerce,” thus asserting that two of the identified goods were not sold in commerce and the
others were sold in commerce. The allegation does not identify which goods were sold and
which two were not, and we do not speculate as to Petitioner’s meaning, or whether Petitioner
erroneously used the wording “all but two” rather than “only two” in making her nonuse
claim. We merely note that the abandonment claim for the Class 25 goods specifically
identifies caps as not having been sold since January 24, 2013, and that Respondent “is not
currently selling t-shirts” (5 TTABVUE 3-4, ¶ 7), which implies that Respondent made some
sales of caps and t-shirts. Thus, the nonuse allegation appears to be at odds with the
abandonment allegation.
5 To set forth a cause of action to cancel the registration of a mark which assertedly has been
abandoned, a plaintiff must allege ultimate facts pertaining to the alleged abandonment that,
if proved, would establish a prima facie case. Otto Int’l, Inc. v. Otto Kern GMBH, 83 USPQ2d
1861, 1863 (TTAB 2007). To provide fair notice to a defendant, such a pleading must allege
at least three consecutive years of non-use, or must set forth facts that show a period of
nonuse less than three years, together with an intent not to resume use. See Trademark Act
§ 45, 15 U.S.C. § 1127. Petitioner’s pleading does neither with respect to t-shirts, and it
specifically limits the abandonment claim in Reg. No. 3884228 to greeting cards (thus
excluding stickers).

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Cancellation No. 92062543

To be clear, Petitioner did not plead abandonment as to stickers or t-shirts, nor

did she plead nonuse as to greeting cards, or any specific goods identified in Class 25.

Further, the fraud claim based on Petitioner’s Section 8 Declaration of Use, which is

limited in the Amended Petition to Cancel to Reg. No. 3755548, is improperly pleaded

and will be given no further consideration. See Bose, 91 USPQ2d 1938.

II. Record

The record consists of the pleadings and, without any action by the parties, the

files of the involved registrations. Trademark Rule 2.122(b)(1), 37 C.F.R.

§ 2.122(b)(1).

A. Petitioner’s Evidence

Petitioner filed a Notice of Reliance on:

1. Respondent’s answers to Petitioner’s interrogatories and document

requests;

2. Petitioner’s Pretrial Disclosures;

3. notarized letters of Marilyn Guthrie and Robin Aarnio;

4. deposition subpoena and document requests served upon Marilyn

Guthrie and her notarized statement (with exhibits) in response;

5. the Testimony Affidavit of Petitioner; and

6. printouts from the Wayback Machine of Respondent’s website from

2010-11 and 2013-14.6

6It appears that the search covered the time period January 25, 1999 through October 20,
2016. 14 TTABVUE 87. For the Board’s convenience, citations in this decision to the
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Cancellation No. 92062543

B. Respondent’s Evidence

Respondent filed a Notice of Reliance on:

1. the entirety of Petitioner’s Notice of Reliance;

2. the Testimony Affidavit of Respondent (with exhibits); and

3. Petitioner’s answers to Respondent’s interrogatories.7

C. Evidentiary Issues

The notarized letters of Marilyn Guthrie and Robin Aarnio and the notarized

statement of Marilyn Guthrie made in response to a subpoena were not signed under

penalty of perjury and therefore are not proper testimony in a Board proceeding.8 See

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE

(“TBMP”) § 703.01(h) (June 2018) (“Testimony by affidavit or declaration pursuant to

37 C.F.R. § 2.20 must be made in conformance with the Federal Rules of Evidence.

The testimony affidavit is a sworn statement, while the declaration permits a

comparable alternative unsworn statement. Both options are under penalty of

perjury, and statements in Board proceedings are subject to 18 U.S.C. § 1001.”).

Nonetheless, because both parties offered the same notarized letters under Notice of

evidentiary record pertain to Respondent’s Notice of Reliance, 14 TTABVUE, as it
encompasses Petitioner’s Notice of Reliance.
7 Respondent also submitted, again, the notarized statement of Marilyn Guthrie with
exhibits, differing only (as best we can tell) by the inclusion of a cover email from Ms. Guthrie
to Respondent’s attorney dated July 19, 2017, identifying the “Pictures to be attached to
schedule A for Marilyn Guthrie’s answers in the above case” and the date in 2016 and 2017
on which each picture was taken. 14 TTABVUE 153. In addition, Respondent submitted an
email exchange that has been withdrawn. 15 TTABVUE.
8In each instance, the notary simply verified the identity of the individual who signed “and
not the truthfulness, accuracy or validity of the document.” 14 TTABVUE 49, 51, and 59.

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Cancellation No. 92062543

Reliance, we deem the evidence stipulated into the record, and accept the letters and

statement for whatever probative value they might have. Cf., Exec. Coach Builders,

Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1176 n.9 (TTAB 2017) (“because both

parties introduced responses to document requests by notice alone and neither party

objected, we will treat the responses as being stipulated into the record”).

With regard to the Testimony Affidavits, the parties should have filed them under

separate cover rather than under Notice of Reliance, as the Notice of Reliance

procedure is reserved for “official documents” and certain “printed publications.”

Testimony Affidavits are neither. Compare Trademark Rule 2.125(a), 37 C.F.R.

§ 2.125(a) and Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e). See WeaponX

Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037-38

& n.12 (TTAB 2018).

Respondent’s resubmission of the entirety of Petitioner’s Notice of Reliance was

unnecessary. When evidence has been made of record by one party in accordance with

the Trademark Rules, it may be referred to by any party for any purpose permitted

by the Federal Rules of Evidence. 37 C.F.R. § 2.122(a). See, e.g., Nazon v. Ghiorse,

119 USPQ2d 1178, 1181 n.6 (TTAB 2016) (“Once evidence is properly of record, it

may be relied on by any party for any purpose.”).

Finally, when a witness has testified concerning the use of Respondent’s mark in

a particular year without providing a specific date, we consider the date to be

December 31 of that particular year, absent documentary evidence or corroborating

testimony of an earlier date. Cf. Trademark Manual of Examination Procedure

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Cancellation No. 92062543

(“TMEP”) § 903.06 (October 2017) (“When a month and year are given without a

specified day, the date presumed for purposes of examination is the last day of the

month. When only a year is given, the date presumed for purposes of examination is

the last day of the year.”).

III. Standing

Respondent has not challenged Petitioner’s standing to bring this case.

Nonetheless, standing is a threshold issue that must be proven by the plaintiff in

every inter partes proceeding. Any person who believes he, she, or it is or will be

damaged by registration of a mark has standing to file a petition to cancel. Trademark

Act § 14, 15 U.S.C. § 1064. To establish her standing, Petitioner must prove that she

has a “real interest,” i.e., a “reasonable” basis for her belief of damage. See Empresa

Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.

Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

Because Petitioner has not pleaded and introduced a United States trademark

registration, Petitioner must prove her standing through other evidence. In this case,

Petitioner testified that she owns a registration for the mark FEEL THE LOVE for a

card game,9 and that she has “engaged in research and discussion with greeting card

manufacturers related to their interest in producing FEEL THE LOVE greeting

cards, notebooks, and journals, and discussed the possibility of a line of FEEL THE

9Respondent also testified that Petitioner owns said registration (14 TTABVUE 106, ¶ 2.),
but we do not treat this acknowledgement as a basis to find standing by concession, as the
goods identified in that registration are different from those identified in Respondent’s
registrations, and Respondent does not acknowledge that Petitioner is, or is interested in
becoming, a competitor.

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Cancellation No. 92062543

LOVE clothing.” 14 TTABVUE 77, ¶¶ 2-3. This testimony is sufficient to show that

Petitioner is a potential competitor of Respondent and, as such, Petitioner has a real

interest in this proceeding and a reasonable belief of damage. Petitioner therefore has

standing. Int’l Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ

1017, 1020 (Fed. Cir. 1984) (finding sufficient the petitioner’s production and sale of

merchandise bearing the registered mark).

IV. Nonuse Claim – Stickers

Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1151(a), a mark may not be

registered unless it is “used in commerce.” Section 45 of the Trademark Act, 15 U.S.C.

§ 1127, provides that “[t]he term ‘use in commerce’ means the bona fide use of a mark

in the ordinary course of trade, and not made merely to reserve a right in a mark.”

See also Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d

1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in commerce

requirement); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773-75 (TTAB

1994) (reviewing the legislative history), aff’d without published opinion, White v.

Paramount Pictures Corp., 108 F.3d 1392 (Fed. Cir. 1997) (opinion available at 1997

WL 76957). The Trademark Act further specifies that a trademark shall be deemed

to be in use in commerce when the goods bearing the mark “are sold or transported

in commerce.” 15 U.S.C. § 1127.

As noted above, Respondent filed her Statement of Use concerning stickers on

September 26, 2010, and the registration issued on November 30, 2010. November

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Cancellation No. 92062543

30, 2010, therefore, is the relevant date in our inquiry concerning Respondent’s pre-

registration use of the mark on stickers.

The only evidence of pre-registration use of the mark FEEL THE LOVE on

stickers10 consists of (1) the notarized letter of Marilyn Guthrie, which states that

“We have carried Ms. Krzemien’s ‘Feel the Love’ products in our store from 2010 to

present” and includes “stickers” among the listed products. 14 TTABVUE 48; and (2)

the notarized statement of Marilyn Guthrie, which refers to an August 7, 2013

shipment of “feel the love items” as “my second shipment,” and states “I no longer

have the first box so am unable to give a date, although it was some time in 2010.” 14

TTABVUE 56, ¶ 7. Because Ms. Guthrie did not provide a specific date in 2010 on

which she received the first shipment from Respondent, we consider the date to be

December 31, 2010, as explained above. Ms. Guthrie’s statements in her notarized

letter and notarized statement therefore do not support a finding that Respondent

used the mark FEEL THE LOVE on stickers prior to November 30, 2010.

Respondent’s testimony, which essentially repeats, verbatim, her answers to

Petitioner’s Interrogatories, does not establish that she used the mark FEEL THE

LOVE on stickers prior to registration. Respondent lists “June 5, 2010” as the date of

first use of FEEL THE LOVE on stickers, and “June 5, 2010 through Present” as the

“Date Range of Actual Use” on stickers in response to Interrogatory No. 2 (14

TTABVUE 9-10) and in her testimony (14 TTABVUE 107-108, ¶ 6). She also

10The notarized letter of Robin Aarnio is not relevant to this inquiry because it pertains only
to clothing and covers 2006-2009. 14 TTABVUE 51.

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Cancellation No. 92062543

maintains, in her interrogatory responses and paragraph 6 of her testimony (14

TTABVUE 109-113), that she “has consistently offered, sold, or provided the goods

claimed in the two registrations from 2006 to the present” (id. at 14-15, Interrogatory

No. 11), that she “has sold stickers as claimed in the … application for registration”

(id. at 15, Interrogatory No. 12), and that she “used the marks on the goods claimed

in the manner represented on her application[] for Registration No. 3884228 … and

reaffirms such representation[] under oath,” pointing specifically to the notarized

letters from Ms. Aarnio and Ms. Guthrie, and to Ms. Guthrie’s notarized statement

(id. at 20, Interrogatory No. 24).

While the testimony of a single witness can, in certain circumstances, support a

claim of use, see Powermatics Inc. v. Glebe Roofing Prods. Co., 341 F.2d 127, 144

USPQ 430, 432 (CCPA 1965), evidence of use is required in this case, where

Respondent’s testimony is the equivalent of her interrogatory responses. See

ShutEmDown Sports, 102 USPQ2d at 1043 (“[Respondent’s] uncorroborated

interrogatory responses that he used the mark or that he intends to use it on these

items are insufficient to rebut the presumption of abandonment resulting from the

lack of any advertising, sales, or customers for the five years prior to respondent’s

responses to petitioner’s discovery requests, for any items listed in respondent’s

registration. A party’s response to an interrogatory is not without evidentiary value,

but generally is viewed as ‘self-serving.’” (Internal citations omitted)). However, other

than the documents from Ms. Aarnio and Ms. Guthrie, which, as we just explained,

do not support a date of use on stickers prior to November 30, 2010, Respondent

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Cancellation No. 92062543

submitted no documentary evidence to corroborate her testimony. Instead,

Respondent states that she has “not retained records of sales volumes from … 2010,

the year[] in which she first used the Challenged mark[],” (id. at 19-20, Interrogatory

No. 22).

As for her pre-registration marketing efforts, Respondent states that she launched

her website in 2010, through which she advertised “selected items.” Id. at 11,

Interrogatory No. 4; id. at 108, Testimony ¶ 6. Again, we consider December 31, 2010

as the launch date of Respondent’s website, and this date is subsequent to the

November 30, 2010 date of registration. In any event, there is no evidence of any sales

from the website, and no indication that “stickers” were among the “selected items”

advertised on the website. Next, in answer to interrogatory No. 4, which asked

Respondent to describe the nature of any advertisements and promotional and

marketing materials, Respondent represented that she has “consistently maintained

point-of-sale displays” at Ms. Guthrie’s “brick and mortar” store in California “from

2010 through the present” (id. at 11) but she identified no other advertisements or

promotional or marketing materials for stickers predating November 30, 2010.11 And

11 We reiterate that we consider the period “from 2010 through the present” to begin on
December 31, 2010, which postdates November 30, 2010. In addition, although Respondent
also identified Ms. Aarnio’s retail store as the other “brick and mortar” location for her “point-
of-sale display[]” (Interrogatory No. 4, and Testimony ¶ 6, 14 TTABVUE 108), Ms. Aarnio did
not state, in her notarized letter, that she carried stickers. Respondent’s assertions, in
response to Interrogatory Nos. 5-7 and 9 (and Testimony ¶ 6, 14 TTABVUE 108-110),
concerning use on the commercial websites zazzle.com and redbubble.com, specify that such
use began in 2017, and thus are not relevant to our inquiry concerning nonuse of the mark
on stickers prior to November 30, 2010. And Respondent’s assertions in response to
Interrogatory No. 10 (and Testimony ¶ 6, 14 TTABVUE 110) concerning cease and desist
letters to third parties are not evidence of use of the mark in commerce on stickers. Id. at
116-126.

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Cancellation No. 92062543

in response to multiple document requests for evidence of use, including the manner

of use and the volume of sales, as well as evidence of advertising, marketing, and

promotion of any of the identified goods under or in connection with the mark FEEL

THE LOVE, Respondent states, in each instance, that she has none. See Respondent’s

Responses to Petitioner’s Document Request Nos. 9-13, 15, 19-21, 24, 30-32, 14

TTABVUE 28-30, 32-33, 36-37. In addition, in response to Interrogatory No. 23,

Respondent states that “other than the maintenance of her website,” she “does not

engage in paid advertising.” Id. at 33.

On this record, we find that Respondent did not make bona fide use of the mark

FEEL THE LOVE on stickers prior to November 30, 2010, the date on which

Registration No. 3884228 issued. Registration No. 3884228 therefore is void ab initio

only as to stickers.

V. Abandonment

Petitioner contends that Respondent failed to make bona fide use of the FEEL

THE LOVE mark for at least three years before November 15, 2016, the date on which

Petitioner filed the instant proceeding. As discussed above, this claim is limited to

the greeting cards identified in Reg. No. 3884228, and all goods, except t-shirts,

identified in Reg. No. 3755548 (the “Disputed Clothing,” and collectively with

greeting cards, the “Challenged Goods”).

A. Statement of the Law

Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides in pertinent part that

a mark shall be deemed to be “abandoned”:

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Cancellation No. 92062543

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.

There are two elements to a nonuse abandonment claim: nonuse of a mark and intent

not to resume use. Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d at 1180;

see also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New

Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1131 (Fed. Cir. 2015).

Because registrations are presumed valid under Section 7 of the Trademark Act, 15

U.S.C. § 1057, the party seeking cancellation based on abandonment bears the

burden of proving its case by a preponderance of evidence. See On-Line Careline Inc.

v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); Imperial

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

1990); Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13

USPQ2d 1307, 1310 (Fed. Cir. 1989).

Introduction of evidence of nonuse of a mark for three consecutive years

constitutes a prima facie showing of abandonment, and creates a rebuttable

presumption that the registrant has abandoned the mark without intent to resume

use. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998). The

burden of production, i.e., going forward, then shifts to the respondent to produce

evidence sufficient to show use of the mark during the relevant period, or an intent

to resume use. Id. The burden of persuasion, however, always remains with the party

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Cancellation No. 92062543

asserting abandonment to prove it, by a preponderance of evidence. Cerveceria

Centroamericana, 13 USPQ2d at 1309-12.

The registrant may rebut the presumption of abandonment arising from its

nonuse of the mark for three consecutive years by presenting evidence showing that

its nonuse during that period was excusable, or evidence showing that, during the

period of nonuse, it maintained an intent to resume use of the mark. See Imperial

Tobacco, 14 USPQ2d at 1394-95. “To prove excusable nonuse, the registrant must

produce evidence showing that, under his particular circumstances, his activities are

those that a reasonable businessman, who had a bona fide intent to use the mark in

United States commerce, would have undertaken.” Rivard, 47 USPQ2d at 1376. To

establish that it had or has maintained an intent to resume use of the mark during

the period of nonuse, the registrant must come forward with evidence beyond mere

conclusory statements or denials that it lacks such intent to resume use. See Imperial

Tobacco, 14 USPQ2d at 1394.

B. Testimony and Evidence

There is no evidence of use of the mark FEEL THE LOVE on the Challenged Goods

for the three years preceding November 15, 2016 (the “Relevant Period”).12 While Ms.

Guthrie states that she “carried” the Challenged Goods from 2010 to 2016, she does

not claim to have sold any of them during the Relevant Period, and there is no

evidence that she did so. Indeed, Ms. Guthrie’s notarized letter and subsequent

12Ms. Aarnio’s notarized letter only covers the years 2006-2009, and thus is not relevant to
this inquiry.

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Cancellation No. 92062543

statement, and the photographs attached thereto, demonstrate that Respondent

shipped FEEL THE LOVE merchandise to Ms. Guthrie on August 7, 2013, which

predates the Relevant Period. Ms. Guthrie stated that “This was my second

shipment,” the first having been “some time in 2010,” as discussed above. 14

TTABVUE 58, ¶ 7. Ms. Guthrie’s notarized statement (id. at 58, ¶¶ 1, 2 and 7) and

the associated photographs demonstrate that the August 7, 2013 shipment remained

in its original packaging until Ms. Guthrie took the photographs on December 20,

2016 (id. at 68-71), and that the merchandise was on display in her store on that date.

Id. at 61-66.

Ms. Guthrie attached to her notarized statement two invoices evidencing the sale

on December 20, 2016 of one jacket, and separately, one coffee mug, one t-shirt and

one sticker, all bearing the FEEL THE LOVE mark. Id. at 74-75.13 Ms. Guthrie stated

that “Sales prior to that date are itemized only as gifts” (14 TTABVUE 58, ¶ 4), and

that she is “Unable to show volume of as [sic] Feel The Love Products because until

December 2016 all items other than plants or flowers were categorized as gifts in our

system.” Id. at 58, ¶ 6. She also stated that

There are no formal documents showing business
arrangements. Kelly is like family. In 2010 the informal
arrangement was for me to stock her items. We agreed that
when the volume of business became significant we would
sit down and work out a formal written agreement. So far
it has not become necessary to do this. Id. at 58, ¶ 9.

13Ms. Guthrie also provided a third invoice dated March 27, 2017 for undefined “Feel The
Love Merchandise.” Id. at 75. Evidence of subsequent use or intent to resume use after the
three-year period of nonuse does not rebut the presumption of abandonment. See Cerveceria
India, 13 USPQ2d at 1313.

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Cancellation No. 92062543

Neither Respondent’s answers to Petitioner’s Interrogatories nor her testimony

establish that Respondent made any bona fide use of her mark in commerce on the

Challenged Goods during the Relevant Period. Respondent lists “June 5, 2010

through Present” as the “Date Range of Actual Use” on greeting cards and “July 1,

2006 through Present” as the “Date Range of Actual Use” on the Disputed Clothing

in response to Interrogatory No. 2 (14 TTABVUE 9-10) and in her testimony (14

TTABVUE 107-108, ¶ 6). She also maintains, in her interrogatory responses and

paragraph 6 of her testimony (14 TTABVUE 109-113), that she “consistently offered,

sold, or provided the goods claimed in the two registrations from 2006 to the present”

(id. at 14-15, Interrogatory No. 11); that she “sold greeting cards during the three

years following January 24, 2013 at the Mt. Vernon Florist” (id. at 15, Interrogatory

No. 12); that she “sold caps during the three years following January 24, 2013” and

“the other goods listed in the identification of goods … claimed in Registration No.

3755548,” and that “[d]uring the period following January 23, 2013, Respondent

supplied her products to the Mt. Vernon Florist where the products were displayed,

offered for sale, and sold” (id. at 16, Interrogatory No. 13); and that she “used the

marks on the goods claimed in the manner represented on her applications for

Registration No. 3884228 and Registration No. 3755548, and reaffirms such

representations under oath,” pointing specifically to the notarized letters from Ms.

Aarnio and Ms. Guthrie, and to Ms. Guthrie’s notarized statement (id. at 20,

Interrogatory No. 24).

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Cancellation No. 92062543

However, other than the documents from Ms. Aarnio and Ms. Guthrie, which, as

we just explained, do not support bona fide use of the mark in commerce on any of

the Challenged Goods during the Relevant Period, Respondent submitted no

documentary evidence to corroborate her testimony. Again, corroborating evidence is

necessary in this case because Respondent’s testimony is simply a restatement of her

interrogatory responses. See ShutEmDown Sports, 102 USPQ2d at 1043. Instead, as

noted above, Respondent states that she has “not retained records of sales volumes

from … 2010, the year[] in which she first used the Challenged mark[],” (id. at 19-20,

Interrogatory No. 22). Further, when asked for documents concerning the prices for

each of the Challenged Goods,14 Respondent stated that she had no responsive

documents in her possession (id. at 30-31, Document Request No. 15), and Ms.

Guthrie responded “Not available.” Id. at 58, ¶ 5.

As for her marketing efforts during the Relevant Period, Respondent states that

she stopped using her website in 2013 and “resumed use of that website, along with

advertising her products on www.zazzle.com and www.redbubble.com in 2017.” Id. at

11, Interrogatory No. 4; id. at 108, Testimony ¶ 6). However, there is no evidence of

any sales from the website, and any advertising in 2017 on the zazzle.com and

redbubble.com websites (no examples of which are of record) are not probative of use

of the mark during the Relevant Period.

14In response to Interrogatory No. 3, Respondent provided a list of suggested retail prices for
each of the Challenged Goods. Id. at 10-11.

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Cancellation No. 92062543

Next, in answer to interrogatory No. 4, which requested a description of

advertisements and promotional and marketing materials, Respondent represented

that she has “consistently maintained point-of-sale displays” at Ms. Guthrie’s “brick

and mortar” store in California “from 2010 through the present” (id. at 11) but she

identified no other advertisements or promotional or marketing materials for the

Challenged Goods during the Relevant Period.15 And as discussed above, Respondent

has no evidence of use, including the manner of use and the volume of sales, and no

evidence of advertising, marketing, and promotion of the Challenged Goods during

the Relevant Period. See Respondent’s Responses to Petitioner’s Document Request

Nos. 9-13, 15, 19-21, 24, 30-32, 14 TTABVUE 28-30, 32-33, 36-37. In addition, in

response to Interrogatory No. 23, Respondent states that “other than the

maintenance of her website,” she “does not engage in paid advertising.” Id. at 33.

Respondent testified (14 TTABVUE 113-14) that in a phone call with Petitioner

in May 2017, she explained that “while I may not have had the level and continuity

of online presence which Ms. Mordoh expected and clearly expects is necessary to

keep my trademark, I have always sold the products covered by the registrations

under the ‘FEEL THE LOVE MARK’ at the brick and mortar retail locations

described in this Affidavit.” She also “explained that in 2006 I gave birth to my son

who is autistic and who, of necessity has been the focus of most of my energies,

15 As previously noted in connection with the nonuse claim, Respondent’s assertions in
response to Interrogatory No. 10 (and Testimony ¶ 6, 14 TTABVUE 110) concerning cease
and desist letters to third parties are not evidence of use of the mark in commerce on the
Challenged Goods during the Relevant Period. Id. at 116-126.

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Cancellation No. 92062543

limiting my ability to spend the time I would like on developing and exploiting the

‘FEEL THE LOVE’ Mark concerning the products for which I have the registrations

at issue.” In addition, Respondent testified that she “clearly explained to Ms. Mordoh

that I have never abandoned the Mark and my many actions to continue selling the

many products bearing the Mark evidenced by the representative photographs, my

cease and desist letters, etc., bear this out.” She also testified that “When my son’s

needs decrease, I will be able and intend to spend much more energy and time

concerning my business.”

The conclusory statements of Respondent in her testimony and interrogatory

responses concerning the use of her mark are without evidentiary support, and are

entitled to little weight. See ShutEmDown Sports, 102 USPQ2d at 1043. And we

cannot infer from this record that Respondent’s extenuating family circumstances,

which arose in 2006, constitute excusable nonuse of the mark on the Challenged

Goods during the Relevant Period. Imperial Tobacco, 14 USPQ2d at 1394-95 (“The

registrant must put forth evidence with respect to what activities it engaged in during

the nonuse period or what outside events occurred from which an intent to resume

use during the nonuse period may reasonably be inferred. Intent to resume use in

abandonment cases has been equated with a showing of special circumstances which

excused a registrant’s nonuse.”); Cf. Am. Lava Corp. v. Multronics, Inc., 461 F.2d 836

(CCPA 1972) (excusable nonuse found where shipments of MULTICAP capacitor

units for use with NORD antenna systems for the U.S. Navy delayed due to Vietnam

War).

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Cancellation No. 92062543

Taking into consideration the entire record, we find that Petitioner has

established, by a preponderance of evidence, a prima facie case of abandonment of

the mark FEEL THE LOVE on the Challenged Goods, and Respondent has not

rebutted this prima facie case.

Decision: The petition to cancel Respondent’s Registration No. 3884228 is

granted as to stickers on the ground of nonuse, and granted as to greeting cards on

the ground of abandonment.16 The petition to cancel Respondent’s Registration No.

3755548 is granted as to all identified goods, except t-shirts, on the ground of

abandonment.17

16Registration No. 3884228 will therefore be limited to the goods identified in Classes 18 and
19, neither of which are the subject of this proceeding.
17 Registration No. 3755548 will therefore be limited solely to t-shirts.

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