Paris Glove of Canada, Ltd.v.SBC/Sporto Corp.

Trademark Trial and Appeal Board

Aug 22, 2007

No. 92044132 (T.T.A.B. Aug. 22, 2007)

Butler Mailed: August 22, 2007

Cancellation No. 92044132

Paris Glove of Canada, Ltd.

v.

SBC/Sporto Corp.

Before Seeherman, Kuhlke and Taylor, Administrative Trademark
Judges.

By the Board:
Petitioner seeks to cancel respondent’s Registration No.
1756155 for the mark AQUA STOP in rectangular form, discussed in
more detail infra, alleging that 1) respondent has abandoned the
mark shown in the registration by failing to use it, in its
registered form, for at least three years, with no intention of
resuming such use; 2) respondent has abandoned the subject mark
by engaging in naked licensing thereof; and 3) respondent has
maintained the registration fraudulently. As to its fraud claim,
petitioner alleges that the combined declaration of use
(Trademark Act §8 – 10 year)/application for renewal (Trademark
Act §9) filed by respondent in 2002 stated under oath that the
mark as shown in the registration remained in use when the mark
was no longer used in its registered form. Petitioner alleges
further that respondent knew this statement was false and
misleading when made and that such statement would (if accurate)
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92044132
2
induce the Office to accept the combined declaration, which the
Office did.
In its answer, respondent denies the salient allegations of
the petition to cancel.
This case now comes up on respondent’s fully briefed motion
for summary judgment in its favor on all counts of the petition
to cancel and respondent’s fully briefed motion to strike certain
exhibits submitted by petitioner.
Respondent’s motion to strike Exhibit 2 from petitioner’s
response to respondent’s motion for summary judgment

Respondent seeks to strike as unauthenticated petitioner’s
Exhibit 2, which is composed of 1) the first page of a Google
“hit list” search summary (1-10) for the term AQUA STOP; 2) an
article from “Forestry and British Timber,” which includes a
reference to AQUASTOP waterproof linings for boots; and 3)
printouts from two on-line catalogs apparently offering third-
party AQUA STOP branded items. Relying on the policy set out at
TBMP §528.05(e) (2d ed. rev. 2004), respondent argues that the
exhibits are not properly of record because they were not
introduced by way of affidavit or declaration.
In response, petitioner argues that the materials were
tendered to show that factual disputes remain for resolution at
trial as to whether the change(s) respondent has made to the form
of the mark covered by the subject registration constitutes a
material alteration such that third parties would not have fair
Cancellation No. 92044132
3
notice as to the mark used under and protected by the
registration.
Materials which qualify as printed publications under
Trademark Rule 2.122(e), 37 C.F.R. §2.122(e), including
electronic versions thereof, are considered self-authenticating.
See TBMP §704.08 (2d ed. rev. 2004). See also Weyerhaeuser Co.
v. Katz, 24 USPQ2d 1230 (TTAB 1992). On a motion for summary
judgment, or a response to a motion, such materials may be
submitted simply as an attachment or exhibit to the proffering
party’s brief, without the need for any separate authentication.
See TBMP §528.05(e) (2d ed. rev. 2004).
Petitioner’s submission from “Forestry and British Timber”
qualifies as a printed publication under Trademark Rule 2.122(e).
On its face, it identifies the publication and the date
published. Accordingly, respondent’s motion to strike is denied
as to the article from “Forestry and British Timber.”
Internet printouts which are not the electronic equivalents
of printed publications do not fall within the parameters of
Trademark Rule 2.122(e). Raccioppi v. Apogee, Inc., 47 USPQ2d
1368 (TTAB 1998). However, like other materials which are not
self-authenticating, Internet materials may be admissible as
evidence in connection with a summary judgment motion, if
competent and relevant, provided they are properly authenticated
by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(e).
See TBMP §528.05(e) (2d ed. rev. 2004).
Cancellation No. 92044132
4
Relying on In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB
2002), petitioner argues that it is well established that “Google
hit-lists” are directly admissible into evidence, although the
probative value of such lists will vary depending on the
circumstances. Petitioner’s reliance on an ex parte case is
misplaced. The Board takes a more permissive stance with respect
to the admissibility and probative value of evidence in an ex
parte proceeding than it does in inter partes proceedings. See
TBMP §1208 (2d ed. rev. 2004). Thus, the Board tolerates some
relaxation of the technical requirements for evidence in an ex
parte case. Id. However, as shown by Fitch, supra, even with
the relaxed evidentiary standards in an ex parte proceeding,
search result summaries from search engines such as Google are of
limited probative value. See also TBMP §1208.03 (2d ed. rev.
2004).
Petitioner, arguing that Raccioppi v. Apogee, Inc., supra,
does not state that a declaration or affidavit is required to
authenticate all types of Internet material, asks the Board to
reexamine and clarify the holding therein in view of
technological advances since the decision issued. Petitioner
contends that the authentication concerns expressed in Raccioppi
no longer exist in view of the Internet Archive. According to
petitioner, this database permanently archives over 55 billion
Internet websites published since 1996 and the Archive’s “Wayback
Machine” feature provides searchable, free access showing each
date on which a website has undergone a significant change.
Cancellation No. 92044132
5
Alternatively, it is petitioner’s position that the standard
articulated in Raccioppi applies solely to the movant on summary
judgment because the non-movant need only assert that material
factual issues remain for trial.
We disagree with petitioner’s position that Raccioppi does
not require that a declaration or affidavit be submitted in order
to authenticate Internet material. In Raccioppi, id. at 1370,
the Board clearly stated that “[t]he element of self-
authentication which is essential to qualification under Rule
2.122(e) cannot be presumed to be capable of being satisfied by
Internet printouts.” Thus, the Board considered, “… as a
question of first impression, whether print-outs of articles
downloaded from the Internet, which have been introduced by means
of a declaration of the person who accessed this information on
the Internet, constitute admissible evidence for purposes of
summary judgment.” The Board made it clear in Raccioppi that it
was only because this material was submitted by declaration that
the Internet printouts were found admissible.
As to applicant’s argument that the Internet Archive makes
the holding in Raccioppi obsolete, the database itself is not
self-authenticating and there is no reason to treat its existence
as authenticating the pages in its historical record. We note
that even petitioner characterizes the “Wayback Machine” as
showing “each date on which a website has undergone a significant
change.” (Emphasis added.) What may be insignificant to the
archivers for the “Wayback Machine” may have significance from
Cancellation No. 92044132
6
the standpoint of evidentiary value in a trademark proceeding.
Thus, changes to a website, or in this case the excerpts taken
from a website that appear in a Google search summary, may not
appear in the Internet Archive. Moreover, in recent cases that
have discussed or dealt with evidence from the Internet Archive,
supporting declarations accompanied the evidence. See, for
example, St. Luke’s Cataract and Laser Institute, P.A. v.
Sanderson, 70 Fed. R. Evid. Serv. 174 No. 8:06-CV-223, 2006 WL
1320242 (M.D.Fla. May 12, 2006) (“Plaintiff requests that
printouts of pages from the laserspecialist.com and the
lasereyelid.com websites taken from www.archive.org (hereinafter
referred to as the “Internet Archive”) and supporting
declarations be admitted to show how the sites have appeared at
various times since 2000.”). See also Novak v. Tucows, Inc., No.
06-CV-1909, 2007 WL 922306 (E.D.N.Y. March 26, 2007), in which
even a declaration was found to be insufficient to authenticate
Internet printouts, including exhibits from the Internet Archive
and its “Wayback Machine” feature, because the declarant lacked
the requisite personal knowledge to establish that the documents
were what he proclaimed them to be.
Petitioner also asserts that the standard for authentication
of Internet evidence set forth in Raccioppi applies solely to the
moving party. However, we see no logical support for this
position. Rule 56(e) of the Federal Rules of Civil Procedure
provides that if the party moving for summary judgment has
supported its motion with affidavits or other submissions which
Cancellation No. 92044132
7
if unopposed would establish its right to judgment, the nonmoving
party may not rest on mere denials or conclusory assertions, but
rather must proffer countering evidence, by affidavit or as
otherwise provided in Fed. R. Civ. P. 56, showing that there is a
genuine factual dispute for trial. See Fed. R. Civ. P. 56(e);
Wright, Miller & Kane, 10B Fed. Prac. & Pro. Civ.3d §2739 (2007);
and TBMP §528.01 (2d ed. rev. 2004). Rule 56 refers specifically
to the pleadings, depositions, answers to interrogatories,
admissions and affidavits. Because Board trial practice differs
somewhat from a proceeding in a Federal Court, evidence that
could be filed under a notice of reliance, see Trademark Rule
2.122, may also be submitted in support of or in opposition to a
motion for summary judgment. Rule 56 clearly requires that the
countering evidence submitted by the nonmoving party be by
affidavit or as otherwise provided by the rule.
Petitioner’s Google “hit list” search summary and excerpts
from on-line catalogs are neither self-authenticating nor
otherwise authenticated. Accordingly, respondent’s motion to
strike is granted in part as to these materials.
History of Registration No. 1756155
The Board first must look at the history of the registration
before turning to respondent’s motion for summary judgment.1

1 The evidentiary record in a cancellation proceeding includes, without action
by any party, the file of the registration which is the subject of the
proceeding. See Trademark Rule 2.122(b).

Cancellation No. 92044132
8
Registration No. 1756155 issued on March 2, 1993 for the
following mark:

(hereinafter “AQUA STOP rectangular form” or “rectangular form”)
for “footwear, namely, rubbers and boots.” The following depicts
the specimen submitted in support of registration:

On May 16, 2002, respondent filed its combined declaration of
continued use (Trademark Act § 8 - 10 year) and renewal for its
registration (Trademark Act §9). The following depicts the specimen
submitted:

Cancellation No. 92044132
9
(Hereinafter “2002 specimen” or “duckman” specimen.) On July 30,
2002, the Post Registration Division accepted the Section 8
declaration and granted the Section 9 renewal.
On January 3, 2005, respondent filed an amendment to its mark
pursuant to Trademark Act §7(e) with the Post Registration Division
seeking “to change the lay-out of the letters” as follows:

(hereinafter “AQUASTOP semicircular form” or “semicircular form”).2
On January 27, 2005, this proceeding commenced with the filing of
the petition to cancel.
Respondent’s post registration amendment, pending with the Post
Registration Division, has yet to be considered.
Respondent’s motion for summary judgment
For purposes of its motion, respondent admits “… that the mark
depicted in the use specimen filed in the Combined Declaration of
Use/Application for Renewal [i.e., the 2002 specimen] and as
currently being used by Registrant is not identical in stylization
to the mark as originally registered.” Respondent asserts, however,
that it has not abandoned the mark or committed fraud on the USPTO.

2 In responding to respondent’s motion for summary judgment, petitioner argues
that respondent could have moved the Board to amend the mark in its
registration prior to the filing of the motion for summary judgment. However,
as petitioner itself has noted, respondent had filed a request to amend the
registration prior to the commencement of this proceeding.

Cancellation No. 92044132
10
We address first some procedural matters. Contrary to
petitioner’s contention, respondent’s motion for summary judgment is
not premature because it was filed before any discovery commenced.
Had petitioner believed it needed discovery in order to respond to
respondent’s motion, it was incumbent upon petitioner to file a
motion for discovery pursuant to Fed. R. Civ. P. 56(f). Further,
respondent’s motion is not procedurally defective, as petitioner
claims, for failure to specify the material facts that are allegedly
undisputed. While a listing of allegedly undisputed facts as a
preamble to a motion for summary judgment is often proffered and is
preferred by the Board, there is no requirement as to the form for
setting forth undisputed facts.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. A genuine dispute with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
We consider in turn respondent’s motion with respect to each of
the three grounds alleged in the petition to cancel.
Cancellation No. 92044132
11
1) Respondent’s motion as to petitioner’s claim that respondent
has abandoned the mark shown in the registration by failing
to use it, in its registered form, for at least three years,
with no intention of resuming such use.

Underlying this abandonment allegation is a supposition by
petitioner that respondent now uses its mark in the forms shown in
the 2002 specimen (i.e., the semicircular form, the linear form, and
the duckman display),3 and that the original rectangular form is no
longer in use. For purposes of its motion, respondent has conceded
that the semicircular mark depicted in the 2002 specimen and as
currently being used by respondent is not identical in stylization
to the rectangular mark that was originally registered. Thus, there
is no genuine issue that respondent does not use the mark in the
original rectangular form, but uses it in the semicircular form.
There is also no genuine issue, as discussed below, that respondent
also uses the mark in linear form and as shown in the duckman
specimen display.4

3 The linear form refers to the mark as it appears on the reverse side of
respondent’s hang tag, see infra. We note that petitioner characterizes the
entire 2002 specimen as an additional version of respondent’s mark. Although
we have accepted this characterization for purposes of our discussion herein,
we do not suggest by this that we consider AQUASTOP and the duckman design as
shown in the specimen to form a single mark.

4 As part of its response to the motion for summary judgment petitioner states
at p. 13 that a genuine dispute exists regarding whether respondent has
abandoned the “original” mark, i.e., the mark shown in the registration,
essentially considering as irrelevant the fact that respondent uses other
forms of the mark. In view of respondent’s concession, made for the purpose
of this motion, that it is not using the rectangular form of the mark shown in
the registration, there is no genuine issue of fact that this form of the mark
is not in use. Further, applicant’s claim of abandonment requires a
determination of whether the other forms of the mark constitute continuing use
of the registered mark, i.e., whether these forms are or are not a material
alteration of the rectangular form of the mark. If the varying forms of the
mark are substantially the same and there is no genuine issue of material fact
that there is no material alteration, then the abandonment claim on this basis
fails.
Cancellation No. 92044132
12
In support of its motion, respondent argues that no new mark is
created by its change from AQUA STOP rectangular form to AQUASTOP
semicircular form. Respondent contends its modernized form of the
mark is not a material alteration of the registered mark because the
word portion is the dominant portion of both forms, thus providing a
continuing commercial impression. According to respondent, the
change in form does not constitute abandonment of the mark or a
break in the continuous usage of the mark. Respondent notes that it
also uses AQUA STOP in linear form on the back of its 2002 hang tag
specimen, which was introduced by the declarations of respondent’s
president and respondent’s attorney. A copy of the back of the
hangtag specimen is reproduced below:

In response, petitioner argues that respondent has abandoned
its registered rectangular form mark in favor of one or more
additional marks (semicircular form, linear form, or the complete
duckman specimen display). Petitioner contends that respondent’s
registered mark in rectangular form is an integrated, stylized mark
composed of elements which are linked to a common effect, making the
stylization inseparable from the literal element. According to
petitioner, issues for trial exist as to “… whether the Original
Mark remains in use, and if not, when Registrant-Respondent’s use of
the Original Mark discontinued; what other forms of the mark have
Cancellation No. 92044132
13
been used since that date, and whether such forms constitute
material alterations of the Original Mark.” Petitioner’s Response
to Respondent’s Motion for Summary Judgment p. 5.
Petitioner’s position that respondent still may be using its
mark in the registered rectangular form (the “Original Mark”) does
not raise a genuine issue for trial because, if true, petitioner
cannot prevail on its claim of abandonment based on a change in the
form of use by respondent. In any event, as noted supra, for
purposes of this summary judgment motion respondent admits that it
is not currently using the mark in the identical stylization in
which the mark is registered. Thus, there exists no genuine issue
of material fact that, according to respondent’s conditional
admission, respondent is not using the mark in its original
registered rectangular form. Nor, in view of the declaration of
respondent’s president that it is using the mark in the forms shown
on the hang tag, and petitioner’s concession of such use, is there
any genuine issue that respondent is using the mark in the
semicircular and linear forms that appear on the 2002 specimen. We
thus turn to the question of whether these forms of the mark
constitute use of the registered mark. That is, we must determine
whether a genuine issue of material fact exists that the forms of
the mark now in use constitute a material alteration from the form
of the mark as registered.
“Material alteration” is the standard for evaluating whether a
change in the form of a registered mark is permissible. See
Trademark Rules 2.72 and 2.73, 37 C.F.R. §§2.72 and 2.73. A
Cancellation No. 92044132
14
material alteration exists if the old and new formats do not create
the same general commercial impression. See J. Thomas McCarthy, 3
McCarthy on Trademarks and Unfair Competition §§19:58:50 and 19:133
(4th ed. 2007). In contrast, a change in the form of a mark does
not constitute abandonment or a break in continuous use if the
change neither creates a new mark nor changes the commercial
impression of the old mark. Id. at §17:26. Marks entirely
comprised of words can sometimes be varied as to their style of
lettering, size and other elements of form without resulting in a
material alteration of the mark. See Ex parte Squire Dingee Co., 81
USPQ 258, recon. denied, 81 USPQ 543 (Comm'r Pats. 1949) (amendment
from rectangular lettering to script not a material alteration); and
TMEP §1609.02(a) (4th ed. April 2005). With respect to Section 8
filings, mere changes in background or styling, or modernization,
are not ordinarily considered to be material changes in the mark.
See TMEP §1604.13 (4th ed. rev. April 2005).
We find that, although the displays are not identical, they are
substantially the same. Thus, there is no material alteration
between the original, registered AQUA STOP rectangular form of the
mark which shows the words depicted on two lines, and the
semicircular and linear forms which depict the words on one line
and, in the case of the semicircular form, as one word. This is
because the commercial impression of the mark is dependent upon the
literal terms AQUA STOP and not on the rectangular, semicircular or
linear forms of display. The particular stylizations of the
semicircular and linear forms simply do not change the essential
Cancellation No. 92044132
15
nature of the rectangular form mark. Nor, contrary to petitioner’s
characterization, does the duckman display on the 2002 specimen
constitute a different form of the AQUA STOP mark. The additional
elements on the hang tag are not integral to the term AQUA STOP such
that a new composite AQUA STOP mark results. The term WATERPROOF
identifies a quality of the goods. The other elements, the duckman
design and the term SPORTO, are separate from the AQUA STOP mark. A
similar, multi-element arrangement exists in the original specimen
where other elements include a design suggesting rain, the term
SPORTO, and the phrase KEEP THE MOISTURE OUT AND THE COMFORT IN.5
The cases relied upon by petitioner are distinguishable insofar
as integral design elements were found to be part of the original
marks. In In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999), applicant
sought to change its special form mark from

to standard character form, TURBO, thus deleting the swirling design
element, which was determined to be “an essential part of the
original mark and hence ‘integrated’ into the composite.” In In re
Dillard Department Stores, 33 USPQ2d 1052 (Comm’r 1993), the
registrant sought to change its mark from

5 Petitioner references a “black bullet” under the second “a” in AQUASTOP with
respect to the 2002 specimen. However, the element referenced is actually the
hole which allows the tag to hang on the item to which it is attached.
Cancellation No. 92044132
16

to
.
The Commissioner determined that the registered mark clearly
contained “salient design features apart from the word portion” and
that, particularly in view of the goods involved (clothing items),
“the syllabication and unique layout could lead someone to view the
mark as a play on the terms ‘in’ and ‘vestments’.” Thus, the
proposed amendment was found to be a material alteration of the mark
as registered.
Unlike the cases referenced by petitioner, there is no design
feature in the registered rectangular form of the mark that is
integral to the word portion of the mark. Further, both the
semicircular and linear forms of the mark convey the same commercial
impression. Moreover, the semicircular form of the mark maintains
the commercial impression of the registered mark in the context of
the overall duckman display (i.e., it is a separate element from the
other wording and designs on the specimen). Thus, respondent’s
change in the style of its lettering does not constitute a material
alteration of the mark as registered.6

6 We note petitioner’s assertion that respondent has misused the registration
symbol by using it in connection with the linear form of the mark on the
reverse side of the hang tag, and that petitioner intends to amend its
Cancellation No. 92044132
17
Because there is no genuine issue of material fact that
respondent’s uses of the term AQUA STOP in the semicircular and
linear forms do not constitute material alterations of the
registered rectangular form, as a matter of law petitioner’s claim
of abandonment must fail. Accordingly, respondent’s motion for
summary judgment on this ground is granted.
2) Respondent’s motion as to petitioner’s allegation that
respondent has maintained the registration fraudulently

Respondent argues that it did not commit fraud in maintaining
its registration because nothing was concealed from the USPTO. That
is, respondent submitted the front side of the duckman specimen
displaying the semicircular form of the mark with its 2002 combined
Sections 8 and 9 declaration and the Post Registration Examiner
accepted the declarations based on the specimen submitted.7
In response, petitioner contends that the 2002 combined
declaration “embodied a material alteration” to the involved
registration and that such declaration “was tendered with the full
knowledge of the deficiency, in anticipation that the Office would
rely on the Declaration, and that the registration would be
renewed.” Petitioner’s Response to Respondent’s Motion for Summary
Judgment p. 22. Petitioner argues that a factual issue on its fraud
claim remains in dispute as to respondent’s intent and whether
“respondent’s commercial activities constituted ongoing use of the

petition to add this as a ground for cancellation after proceedings resume
herein. However, because we find that the linear form is not a material
alteration of the registered mark, no purpose would be served by allowing such
an amendment.

Cancellation No. 92044132
18
Original Mark in commerce so as to provide a proper basis” in
support of the declaration. Petitioner’s Response to Respondent’s
Motion for Summary Judgment p. 23.
Fraud in obtaining a renewal of a registration amounts to fraud
in obtaining a registration. See Torres v. Cantine Torresella
S.r.L., 808 F.2d. 46, 1 USPQ2d 1483 (Fed. Cir. 1986). Fraud in
obtaining a trademark registration occurs "when an applicant
knowingly makes false, material representations of fact in
connection with his application.” Id. “If a registrant files a
verified renewal application stating that its registered mark is
currently in use in interstate commerce and that the label attached
to the application shows the mark as currently used when, in fact,
he knows or should know that he is not using the mark as registered
and that the label attached to the registration is not currently in
use, he has knowingly attempted to mislead the PTO.” Id. (Emphasis
added.) The Court in Torres, citing In re Holland, 737 F.2d 1015,
1019, 222 USPQ 273 (Fed. Cir. 1984), recognized that “[i]t is the
practice of the office to allow renewal on the basis of a label
which presents the mark in a somewhat different form from the form
in which the mark is registered if the specimen does not show a
material alteration of the mark as registered.”
Here, no genuine issue of material fact exists that when
respondent filed its combined §§8 and 9 declaration it submitted the
duckman specimen with the semicircular display of the term AQUASTOP.

7 The declaration was filed through the USPTO’s TEAS electronic filing system,
and therefore only the front side of the specimen was scanned.
Cancellation No. 92044132
19
Nor is there a genuine issue that respondent was using the mark in
the form shown in the duckman specimen at that time. The Office
reviewed the submissions and accepted the declaration. Thus, there
is no genuine issue that respondent truthfully apprised the Office
of the manner of use of its mark when it filed its declaration, and
nothing was concealed or withheld from the Office. Petitioner has
not shown that there are any issues of material fact in dispute with
respect to respondent’s intent and as to whether respondent’s
activities constituted use of the registered mark. Because the
statements made by respondent in its combined declaration were
truthful, i.e., that it was using the mark as shown in the specimen
submitted with the declaration, respondent’s intent in making the
statements is not material. As for the adequacy of the specimen to
demonstrate use of the registered mark, that does not go to the
issue of fraud. At most, it can go to the issue of abandonment, but
as discussed above, because we find that the semicircular form is
not a material alteration of the rectangular form, there has been no
abandonment of the mark. Accordingly, we find that there are no
genuine issues of material fact with respect to the ground of fraud
and that, as a matter of law, respondent did not commit fraud in
maintaining its registration.
3) Respondent’s motion for summary judgment as to petitioner’s
allegation that respondent has abandoned the subject mark by
engaging in naked licensing thereof

Respondent argues that there has been no abandonment due to
naked licensing. According to respondent, as supported by the
Cancellation No. 92044132
20
declaration of its president,8 respondent’s branded goods are
manufactured to its specifications by its vendors. The declaration
states that respondent designs the goods, samples products from each
vendor, controls distribution and pricing, and controls the use of
the AQUA STOP mark on the goods, including supplying the hang tags
and packaging in controlled numbers to its manufacturers. The
declaration further explains that, while respondent’s goods to
Canadian customers may have been “dropped shipped” (directly shipped
from the manufacturers), its goods to U.S. customers are warehoused
and shipped by respondent.
In response, petitioner argues that respondent’s motion is not
accompanied by copies of its license agreements with foreign
manufacturers or distributors, or by affidavits from such entities
attesting to the terms of the licensing agreements and conditions of
sale. Petitioner contends that genuine issues of material fact
remain for trial with respect to the relationship respondent has
with the third parties, whether respondent has written agreements
with the third parties, and the degree to which respondent has
exercised control over the quality of goods bearing the mark(s) and
the manners and forms in which the mark is and has been displayed.
Petitioner relies on the declaration of respondent’s president
submitted in a Canadian proceeding wherein she states that

8 Petitioner’s objection to the declaration of respondent’s president on the
bases that the credibility of the declarant has not been tested and the
assertions made are self-serving in nature is overruled. Such declarations
are permissible on summary judgment even though they are self-serving in
nature and there is no opportunity for cross-examination of the declarant.
See TBMP §528.05(b) (2d ed. rev. 2004).

Cancellation No. 92044132
21
respondent “contracts for the manufacture of footwear bearing the
trademark AQUA STOP with various manufacturers in a number of
countries” and that respondent “receives orders from its Canadian
distributors … directs foreign manufacturers to distribute products
directly to the said distributors in Canada” and the Canadian
distributors “are invoiced directly by Sporto’s manufacturers.”
A trademark registration may be cancelled if the mark has
become “abandoned.” See Trademark Act §45, 15 U.S.C. §1127. A mark
can become abandoned by any act or omission of the registrant which
causes the mark to lose its significance as an indication of origin.
Thus, uncontrolled and “naked” licensing can result in such a loss
of significance of a trademark that a registration should be
cancelled. See J. Thomas McCarthy, 3 McCarthy on Trademarks and
Unfair Competition §18:48 (4th ed. 2007).
There exists no genuine issue of material fact that respondent
contracts with foreign companies for the manufacture of its goods.
On this point, the declaration of respondent’s president submitted
in support of its motion is consistent with the declaration
submitted in the Canadian proceeding. In the present proceeding,
respondent’s president elaborated on the nature of the relationship
between respondent and the foreign manufacturers. Based on the
evidence of record, there is no genuine issue of material fact that
respondent does not license its mark but, rather, contracts for
manufacture of the goods under its mark. Nothing argued by
petitioner raises a genuine issue of fact as to this. Thus, as a
Cancellation No. 92044132
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matter of law, respondent has not abandoned its mark due to naked
licensing.
Accordingly, no genuine issues of material fact exist as to any
of petitioner’s claims, and we find that respondent is entitled to
judgment on each of these claims as a matter of law. Respondent’s
motion for summary judgment is granted and the petition to cancel is
dismissed with prejudice.
In view of our finding herein that the mark which is the
subject of respondent’s request for amendment does not constitute a
material alteration of the registered mark, the file will be
forwarded to the Post Registration Division to grant respondent’s
pending request for amendment of the registration.
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