The Opposer or Petitioner in a proceeding before the Trademark Trial and Appeal Board (the “Board”) has the burden of proof to demonstrate there was no use of the mark in commerce prior to the time the trademark application was filed. This showing must be made by a preponderance of the evidence. Opposer or Petitioner may present a prima facie case of nonuse based on the Applicant or Registrant’s inability to present any evidence that there was use of the mark in commerce. If a prima facie case is established by Opposer or Petitioner, then the burden shifts to rebut the case by producing evidence that establishes interstate use in commerce by the filing date.
Opposer or Petitioner will obtain the evidence through discovery. Discovery may or may not include depositions. Evidence acquired through discovery must be made a part of the record. It is important that the Opposer or Petitioner make requests for production of documents, Interrogatory Demands, etc. seeking evidence of interstate sales of the goods or services branded with the mark. The responses to the discovery demands should be made a part of the record. It is possible that the responses may show that no documents were produced or the responses and documents could tend to indicate sales of the branded goods or services were not made. However, if no discovery requests are made or if the Opposer/Petitioner does not make the responses part of the record, the burden may not shift to the Applicant/Registrant.
See Julius Samman Ltd. v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential], where the Opposer did not submit into the record, responses to admission requests, document requests, or interrogatories showing that Applicant wasn’t able to produce documentary evidence to support use of the trademark in commerce. In this case, the Opposer attached supporting documents to its trial brief instead of properly make the documents a part of the record. The Board pointed out that materials attached to the trial brief cannot be given consideration, unless, the documents were properly made a part of the record during the taking of testimony, TBMP Section 704.04(b). In Julius Samman Ltd., the Opposer did not meet the burden of a prima facie showing that the Applicant wasn’t using the mark at the time the application was filed.
Compare Julius Samman Ltd., to United Global Media Group, Inc. v. Bonnie Tseng, 112 USPQ2d 1039 (TTAB 2014) [precedential], where the Board concluded that the subject application was void ab initio for non use of the mark. In this case, the Opposer made the necessary demands for documents requesting proof of use of the mark in commerce prior to the trademark filing date. The Applicant failed to produce any documents demonstrating use of the mark in commerce. This established a prima facie case of nonuse by the Opposer.
For another Board decision finding the application void ab initio for nonuse, see Modern House Wines, LLC v. Hidden Wineries Inc., Cancellation No. 92058885 (August 7, 2017) [not precedential]. Here, the Petition alleged grounds of nonuse and abandonment. The record consisted of the pleadings, the file of the subject registration, and by way of the Petitioner’s Notice of Reliance, Responses to Interrogatories and attached documents, Responses to Requests for Admissions, and excerpts of Internet websites. No depositions were taken, but both parties filed briefs.
The Respondent improperly attached documents to its brief, thus the Board would not consider the documents as evidence. In responses to Interrogatories, the Respondent alleged it advertised and promoted its wine product, but did not state that sales were made prior to filing the application. In addition, Respondent’s website pages did not show use of the subject mark on its wine, it only demonstrated other brands of wines for sale prior to the filing of the trademark application. The only sales of the goods with the subject mark were shown to take place over three years after the application was filed. Therefore, the Board concluded there was nonuse and the application was void ab initio. In addition, the Board determined that the mark was abandoned. For more information on abandonment of trademarks, see our blog post entitled, How Do You Prove Abandonment Of A Trademark. If you have questions concerning proper use of a trademark in commerce, please feel free to contact our office for a courtesy consultation.