Paul Reubensv.Uneeda Doll Company, Ltd.

Trademark Trial and Appeal Board

Nov 5, 2021

92070091 (T.T.A.B. Nov. 5, 2021)

Mailed: November 5, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- Paul Reubens v. Uneeda Doll Company, Ltd. Cancellation No. 92070091 _____ Karen Kreider Gaunt and Govinda M. Davis of Dinsmore & Shohl LLP, for Paul Reubens. Wendy K. Marsh, Jeffrey D. Harty, and Allison E. Kerndt, of Nyemaster Goode, P.C., for Uneeda Doll Company, Ltd. ---- Before Wellington, Goodman, and Allard, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Uneeda Doll Company, Ltd. (“Respondent”) owns a registration on the Principal Register for the mark for “dolls and doll accessories” in International Class 28.1 1 Registration No. 837848, issued on October 31, 1967. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92070091 2 Paul Reubens (“Petitioner”) filed a petition to cancel Respondent’s registration on the ground of abandonment under Sections 14(3) and 45 of the Trademark Act (“the Act”), 15 U.S.C. §§ 1064(3) and 1127, and fraud. Specifically, Petitioner alleges, inter alia, in support of the abandonment claim that: Respondent did not ship or sell dolls using the PEE WEE mark in U.S. commerce or commerce that is able to be regulated by Congress, for a period of at least eleven years, from November 16, 2007 through November 28, 2018, the filing date of [Petitioner]’s Petition for Cancellation.2 Respondent did not have an intent to resume using the PEE WEE mark for or in connection with the sale or shipment of dolls in U.S. commerce or commerce that is able to be regulated by Congress from November 16, 2007 through November 28, 2018, the filing date of [Petitioner]’s Petition for Cancellation.3 In connection with the fraud claim, Petitioner alleges, inter alia, that: Respondent’s June 26, 2007 [and July 6, 2017] Section 8 and 9 declaration of continued use and renewal, as described herein, made an explicitly false representation of Respondent’s continued use of PEE WEE and/or its entitlement to assert excusable non-use in connection with the Registration.4 Respondent knew that its June 26, 2007 [and July 6, 2017] Section 8 and 9 declaration[s] of continued use and renewal contained the false representations . . .5 Respondent intended that the USPTO would be deceived by its false representation[s in the declarations], and intended that the USPTO rely upon such false representation[s] in order to maintain Respondent’s Registration on the Principal Register.6 2 15 TTABVUE 8 (Petition to Cancel, as amended, ¶ 36). 3 Id. at 12; ¶ 61. 4 Id. at 14-15 and 17; ¶¶ 76 and 87. 5 Id. at 15 and 17; ¶¶ 77 and 88. 6 Id. at 15 and 17; ¶¶ 78 and 89. Cancellation No. 92070091 3 Respondent filed an answer admitting one of Petitioner’s key allegations, namely, that Respondent “did not ship or sell dolls using the PEE WEE mark in U.S. commerce or commerce that is able to be regulated by Congress, for a period of at least eleven years, from November 16, 2007 through November 28, 2018.”7 Respondent made several other admissions but denied the remaining salient allegations of the abandonment and fraud claims. The parties have fully briefed this proceeding, including a reply brief filed by Petitioner.8 I. Evidentiary Objections Petitioner has objected to certain materials that Respondent attempted to introduce under a notice of reliance.9 The objected-to materials are documents that Respondent produced in response Petitioner’s discovery requests.10 The materials include: copies of invoices and related ordering information sheets dated 2018 and 2019; printouts of email correspondence dated 2018 and 2019; and copies of pages from “Dolls” magazine (issues dated between 2017 to 2018). Petitioner objects to the introduction of the materials on basis that: (1) “Respondent improperly attempts to rely on its own documents produced in discovery, which cannot be introduced through 7 16 TTABVUE 4 (Answer, as amended, ¶ 36). 8 37 TTABVUE (Petitioner’s main brief); 39 (Respondent’s brief); and 40 TTABVUE (Petitioner’s reply brief). 9 29-30 TTABVUE (Confidential and public copies of Respondent’s amended notice of reliance); 31 TTABVUE (Petitioner’s second Motion to Strike). The Board deferred decision on the objections until final decision. 36 TTABVUE. 10 30 TTABVUE 79-126 (Bates Nos. 0471-0518). Cancellation No. 92070091 4 a notice of reliance . . . because they consist of Respondent’s private business documents such as purported purchase orders, offer sheets, e-mail correspondence and sample invoices”;11 and (2) “because these documents, though requested by Reubens in discovery, were not disclosed during the discovery period and not disclosed until after Reubens had the opportunity to depose Respondent’s witness.”12 As to the second (timeliness) objection, Fed. R. Civ. P. 26(e) places a duty on parties to supplement their discovery responses “in a timely manner.” See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 408.03 (June 2021). However, “[t]his is not an invitation to hold back material items and disclose them at the last minute” and “[a] party who does so may be subject to the preclusion sanction set forth in Fed. R. Civ. P. 37(c)(1).” Id. Discovery closed on August 6, 2019. As Petitioner correctly notes, “not only were Respondent’s ‘supplemental’ document productions made [on September 21, 2019] after the close of discovery, after [Petitioner] deposed Respondent’s witness, but two days after [Petitioner] moved for summary judgment.”13 Petitioner argues that it will be harmed if the materials are allowed “because they were produced after the discovery period and [Petitioner] did not have the opportunity to seek deposition 11 37 TTABVUE 20-21. Petitioner specifically objects on this basis to documents identified as “Bates Nos. 0471-0501.” 12 37 TTABVUE 20, 21. 13 Id. at 20. Petitioner points out that the parties agreed to the Rule 30(b)(6) deposition being taken after the close of discovery “to accommodate Respondent’s witness’s travel schedule.” Id. at 22. Cancellation No. 92070091 5 testimony or follow up discovery regarding these documents.”14 Petitioner, however, does not assert that it sought to reopen the discovery period for purposes of conducting any follow-up discovery requests or to continue the Rule 30(b)(6) deposition based on the supplemental documents. As Petitioner acknowledges, it filed a summary judgment motion two days before the supplemental documents were produced, and Respondent relied on the supplemental responses in its opposition to the motion.15 Thus, it should have been evident to Petitioner that Respondent would potentially rely, or seek to rely, on these materials. Under these circumstances, we do not find that Respondent’s failure to produce the documents earlier and before discovery closed precludes it from attempting to introduce them at trial. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (“we hold that the Board did not abuse its discretion by refusing to strike Nestle's evidence”); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (no estoppel), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), overruled on other grounds. As to Petitioner’s other objection, based on the types of materials Respondent seeks to introduce under notice of reliance, Trademark Rule 2.122(g) provides that only certain types of evidence (“identified in paragraphs (d)(2) and (e)(1) and (2) of 14 Id. 15 Respondent filed its opposition to the summary judgment motion (10 TTABVUE), with the objected-to materials attached in support, on November 13, 2019. Petitioner objected to the materials as untimely in its reply brief (12 TTABVUE); however, the summary judgment motion was denied by the Board (14 TTABVUE) for reasons that did not require consideration of the objected-to materials. Cancellation No. 92070091 6 this section and § 2.120(k)”) may be introduced under a notice of reliance. “Normally, exhibits filed under a notice of reliance consist of pleaded registrations, pleaded applications, printed publications, official records, Internet materials, written disclosures of an adverse party, discovery depositions of the adverse party, and certain written discovery responses of an adverse party.” WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1037-38 n.12 (TTAB 2018). We have reviewed the materials submitted by Respondent under its amended notice of reliance and decide as follows: Respondent’s submission of copies of invoices, ordering information sheets, meeting notes and printouts of email correspondence, under a notice of reliance, was improper and we sustain the objection; therefore, these materials, along with any arguments relying upon them, are not given consideration.16 Respondent’s submission of copies of pages from “Dolls” magazine, under notice of reliance, as amended, was proper and we overrule the objection; therefore, these materials are considered of record.17 Finally, Respondent objects to Petitioner’s introduction of a copy of request for an 16 30 TTABVUE 79-109 (and identified as Bates Nos. 0471-0501). As explained in a prior Board interlocutory order, “[a] party may not submit its own documents produced in discovery under notice of reliance alone, unless the documents are otherwise admissible under notice of reliance,” citing Trademark Rules 2.122(k)(3)(ii) and 2.122(e). 28 TTABVUE 5. It was further explained that “[a]lthough Trademark Rule 2.120(k)(5) permits submission of a party’s own discovery responses under limited circumstances, the rule contemplates only the submission of discovery responses, not documents,” citing Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1217 n.8 (TTAB 2011) (defendant’s responses to plaintiff’s interrogatories and document requests admissible, but not produced documents). Id. at 5-6. 17 30 TTABVUE 110-126 (and identified as Bates Nos. 0502-0518). In an interlocutory order, the Board deemed these materials admissible, as submitted under the amended notice of reliance, and denied Petitioner’s objection to them on that basis. 36 TTABVUE 4. Cancellation No. 92070091 7 extension of time filed in 2004 in a cancellation proceeding involving Respondent and “Herman World, Inc.”18 In the notice of reliance, Petitioner asserts that Respondent’s “explanation for requesting a third extension of time in cancellation proceeding no. 92042142 and attached amendment are relevant to Petitioner’s claims of fraud and abandonment.”19 Respondent argues that the request “has no relevance to the issues of the present cancellation proceeding which only concerns activities dated 2007 or after,” noting that Petitioner “only pleads abandonment of the mark at issue from November 16, 2007 through November 28, 2018 and fraud based on alleged non-use of the mark at issue from June 26, 2007 through July 6, 2017.”20 We see no need to strike the 2004 extension request because the Board is capable of weighing its relevance or lack thereof. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) (“Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations. . . . [W]e find no basis on which to strike any testimony or other evidence.”). Indeed, the objection is somewhat moot because Petitioner admits in his reply trial brief that he is not actually relying on this document.21 18 Introduced under Petitioner’s notice of reliance (18 TTABVUE 93-96) as Exhibit H. 19 Id. at 6. 20 39 TTABVUE 11. 21 In response to Respondent’s objection, Petitioner acknowledges that he “did not rely on [the extension request] in his trial brief” or “at trial,” and he “does not oppose Respondent’s objection.” 40 TTABVUE 8. Cancellation No. 92070091 8 II. Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s subject registration file. Petitioner introduced several materials under notice of reliance, including:22  Respondent’s responses to Petitioner’s first set of interrogatories, and first set of requests for admission (dated September 3, 2019), filed in its entirety under seal;  Copy of the transcript, with accompanying exhibits, of the Rule 30(b)(6) deposition of Respondent through its witness, Larry Hogge, filed in its entirety under seal;  Copy of Petitioner’s application (Ser. No. 87308709) and a related USPTO Office Action;  Copies of Petitioner’s Registrations Nos. 5176579 and 5151383, showing their status and title, for the mark PEE-WEE HERMAN and covering, respectively, “computer application software for mobile phones, namely, software for mobile phones for use in entertainment applications in the nature of games and audio/visual content featuring music and videos” and “T-shirts; costumes, namely, Halloween and masquerade costumes.” Respondent introduced copies of pages from “Dolls” magazine under notice of reliance.23 We point out that although Respondent introduced certain portions of the transcript from the Rule 30(b)(6) deposition of itself through its witness, Larry Hogge, 22 18 TTABVUE (notice of reliance) and 19-20 TTABVUE (Sealed copy of the notice of reliance with confidential materials). Petitioner also identifies materials from the involved registration file in its notice of reliance; however, as noted above, those materials are automatically of record pursuant to Trademark Rule 2.122(b). 23 30 TTABVUE 110-126 (and identified as Bates Nos. 0502-0518). As discussed, but to be clear, other materials submitted under the same notice of reliance (at 30 TTABVUE 79-109) are not of record. See Note 16. Cancellation No. 92070091 9 pursuant to Trademark Rule 2.120(k)(4), this was unnecessary.24 Petitioner already introduced the entire deposition transcript and, as Trademark Rule 2.122(a) provides, “[w]hen evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.” See also TBMP § 702.02 and related authority cited therein, including 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.”). However, we further note that Respondent’s submissions of portions of the transcript were redacted, but not filed under seal and without any objection as to their confidentiality. Accordingly, we do not treat the unredacted portions of the testimony, as submitted by Respondent, as “confidential.”25 III. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action26 is a threshold issue in every inter 24 22 TTABVUE 5-75 and 30 TTABVUE 8-78. 25 Indeed, a review of Respondent’s Rule 30(b)(6) testimony reveals that designating the entire transcript as confidential evidence is excessive. Improper designation of evidence as “confidential” thwarts the Board’s ability to discuss the evidence of record as needed to explain the bases for decisions. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010). In this case, we will treat as confidential the testimony that is clearly confidential or commercially sensitive but we will not otherwise be bound by confidentiality designation as to the testimony in its entirety. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.”); see also Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (“[W]e will treat only testimony and evidence that is truly confidential or commercially sensitive as such.”); Edwards Lifesciences Corp., 94 USPQ2d at 1402-03 (“Because of the overdesignation of testimony and evidence by the parties, it is not clear to us what is intended to be truly ‘Confidential’ and ‘Confidential Attorney’s Eyes Only.’ Therefore, in rendering our decision, we will not be bound by the parties’ designation.”). 26 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Cancellation No. 92070091 10 partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). Petitioner owns an application for the mark PEE-WEE HERMAN for “toys, namely, plush toys, action figures, vinyl dolls and bobble head dolls,” that has been refused registration by the USPTO based on Respondent’s registration.27 Petitioner is also the owner of registrations, which are of record, for the same mark for “game software for mobile phones featuring music and videos” and “T-shirts; costumes, namely, Halloween and masquerade costumes.”28 Based on these proven facts and circumstances, we find Petitioner has a reasonable belief of damage that is proximately caused by the continued registration of Respondent’s mark, and that the petition to cancel that registration is within the zone of Petitioner’s interests, as protected by the Act. Corcamore v. SFM, 2020 USPQ2d 11277, at *7-8 (TTAB 2020). See also Australian Therapeutic, 2020 USPQ2d 10837 at *3. See also, ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of Office action showing that petitioner’s pending application was refused registration based on respondent’s registration established standing); Life Zone Inc. v. Middleman Grp. Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13 and 14 remain applicable. See Major League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020 USPQ2d 11488, at *5 n. 18 (TTAB 2020); Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, *2 (TTAB 2020). 27 18 TTABVUE 212-224 (copies from USPTO electronic database for application and Office Action issued on May 29, 2018). 28 20 TTABVUE 132-138. Cancellation No. 92070091 11 Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (Opposer’s evidence of the suspension of its pending trademark application based on the applicant's application establishes its standing); see also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982) (“standing may be established by assert[ing] a likelihood of confusion which is not wholly without merit ... or, as here, a rejection of an application during prosecution”). Accordingly, Petitioner has established his entitlement to a statutory cause of action. IV. Abandonment A. Applicable Law Under Section 45 of the 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. Because 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, 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009); 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 Cancellation No. 92070091 12 use. The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that it has either used the mark or that it 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, 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)). We also point out that abandonment is a question of fact. See Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 667 (Fed. Cir. 1984). Any inference of abandonment must be based on proven fact. Section 45 of the Act. See also Cerveceria Centroamericana S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1310 (Fed. Cir. 1989) (“The protection due the registrant is provided by requiring that the inference have an adequate foundation in proven fact. Whenever an inference is based on pure speculation and ‘there is no basis ... to infer nonuse,’ a prima facie case of abandonment must fail.”) (quoting P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328, 332- 33, 196 USPQ 801, 804-05 (CCPA 1978)); Stetson v. Howard D. Wolf & Assoc’s, 955 F.2d 847, 21 USPQ2d 1783, 1785 (2d Cir. 1992) (A party claiming that a mark has been abandoned must show “non-use of the mark by the legal owner and no intent by that person or entity to resume use.”). B. Prima Facie Showing of Abandonment Respondent has admitted that it “did not ship or sell dolls using the PEE WEE Cancellation No. 92070091 13 mark in U.S. commerce or commerce that is able to be regulated by Congress, for a period of at least eleven years, from November 16, 2007 through November 28, 2018.” The September 2019 discovery deposition of Respondent, through its representative, Larry Hogge, confirmed as much:29 Q. So when you say you've been “here,” you mean you've been working at Uneeda since 2002? A. Yes. Q. So since you've been working at Uneeda since 2002, have you ever sold any Pee Wee dolls to any person or company in the United States? A. I don't believe so. And Respondent later testified:30 Q. Okay. And then correct me if I'm wrong, but based on that testimony and the testimony that you made earlier, is it accurate to say that Uneeda Doll Company, Limited, has not made any sales of a Pee Wee doll anywhere within the last five years, correct? A. That's correct. Q. And to your recollection has Uneeda Doll Company, Limited, made any sale of any Pee Wee doll anywhere within the last ten years? A. Not that I'm aware of, no. Q. So is it your testimony, then, that similar to what we discussed before, that Uneeda Doll Company, Limited, has not sold a Pee Wee doll or a similar Pee Wee product for possibly more than ten years? A. That's correct. Despite the aforementioned admission and testimony, Respondent argues in its trial brief that:31 29 22 TTABVUE 16 (Hogge Dep. 40:22-41:3). 30 Id. at 22 (Hogge Dep. 64:13-65:2). 31 39 TTABVUE 19. Cancellation No. 92070091 14 it is clear from the facts and circumstances of the present case that Respondent has been using the “PEE WEE” mark of the ‘848 Registration. As already noted, Respondent has shown the PEE WEE doll to a customer in the U.S. and had it for sale on Amazon as recently as 2018. (30 TTABVUE 79-109). Further, Respondent has been consistently showing U.S. customers its PEE WEE dolls and products that are always displayed and available for sale in its Hong Kong showroom. (30 TTABVUE 12, 14). Respondent has further advertised its PEE WEE products in Dolls magazine and on its Facebook page. (30 TTABVUE 11, 16, 17, 110-126). As to Respondent’s statement that it has shown “a PEE WEE doll to a customer in the U.S. and had it for sale on Amazon as recently as 2018,” the citation to the record references materials which are not of record, as we have sustained the objection to them (see Note 16, infra). Furthermore, Respondent’s witness made it clear Respondent knows very little about what goods, if any, have been listed on the Amazon website. Specifically, when confronted with Respondent’s interrogatory response that mentions sales on the Amazon website, Respondent’s witness was unfamiliar with these putative sales and could not confirm if the dolls were actually sold:32 Q. But sitting here right now as the company representative, are you aware of any particular listing on Amazon for a Pee Wee doll? A. I don't know if they are on there or if they've been sold. I don't know how to answer that question because, like I said, that's not something I deal with on a -- I know he put them on there just like all the other things we have listed on there, but that's not something I deal with daily so I wouldn't know what's on there right now. They could have already sold. 32 22 TTABVUE 25 (Hogge Dep. 76:17-77:2); 19 TTABVUE (confidential copy). Although “Amazon” is redacted from the transcript made public by Respondent (at 22 TTABVUE), Respondent identified “Amazon” in its trial brief as a putative retail site for its dolls. We therefore do not treat the reference to “Amazon” in the testimony as confidential. Cancellation No. 92070091 15 Respondent’s witness also testified that “no one” spoke to the person purportedly in charge of selling Respondent’s goods on the Amazon website “in connection with providing these answers.”33 With respect to Respondent’s claim that it “has been consistently showing U.S. customers its PEE WEE dolls and products that are always displayed and available for sale in its Hong Kong showroom,” Respondent’s testimony regarding this activity and sales to U.S. consumers is extremely vague. Respondent describes its “practice” as follows:34 Our general practice is, and let's say 90 percent of our customers go to Hong Kong, and we have a showroom there permanently with all of our dolls that we are offering for sale and they come in, the buyers, and myself or one of the other people in Hong Kong will present the line, take them through, let them pick and choose what they want. As for the other 10 percent of Respondent’s business, Respondent testified that “there’s a couple of accounts in the U.S. that do not travel to Hong Kong that we see here.”35 Although Respondent identified some U.S. retailers as customers, it could not point to any particular sales for the years 2007-2019 for PEE WEE branded goods in the United States. In addition, Respondent was questioned regarding its response to an interrogatory asking it to “Identify the product and, if applicable, service category, Respondent's yearly dollar and unit volume of sales between 2007 and 2019 for goods and/or services sold in connection with Respondent’s Mark.”36 Although Respondent 33 Id. (Hogge Dep. 75:14-22). 34 30 TTABVUE 14 (Hogge Dep. 21:16-22). 35 22 TTABVUE 21 (Hogge Dep. 60:4-5). 36 19 TTABVUE 24 (Respondent’s response to Petitioner’s Interrog. No. 43, filed under seal Cancellation No. 92070091 16 provided substantial numbers (designated “confidential”) for its “yearly dollar and unit volume of sales in the U.S.” for each individual year, Respondent clarified in the deposition that this information does not refer to profits from PEE WEE-branded products.37 Indeed, Respondent reiterated its admission that it was unaware of any sales of PEE WEE dolls since 2002.38 Finally, the record is void of any corroborating documents evidencing U.S. buyers would visit the showroom in Hong Kong, make a purchase, and then re-sell the goods in the United States under the mark PEE WEE. Finally, as to Respondent’s argument that it has “advertised its PEE WEE products in Dolls magazine,” the record includes printouts of pages from 7 different issues of the magazine, the earliest being a January 2017 to September 2018.39 Some of the earlier advertisements contain statements such as:40 To celebrate our 100th anniversary in 2017, we will introduce several new lines of dolls at affordable prices, namely Pee Wee ®, Baby Club… These statements, however, constitute hearsay under Fed. R. Evid. 802, and thus cannot be relied on for their truth. See Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.5 (TTAB 1980) (“magazine articles ... are hearsay in nature and thus are probative not for the truth of the matters contained therein but rather only for what they show on their face.”). See also WeaponX Performance Prods. Ltd., 126 USPQ2d and designated “confidential”). 37 22 TTABVUE 28 (Hogge Dep. 86:14-23) 38 Id. 39 30 TTABVUE 110-126. 40 30 TTABVUE 114. Cancellation No. 92070091 17 1039. At best, the Dolls magazine evidence is probative for what it shows on its face - that consumers may have been exposed to Respondent’s advertisements for “Pee Wee” dolls as early as 2017.41 Based on the record in its entirety, but with particular emphasis on Respondent’s admission and Respondent’s testimony regarding its activities, we find by a preponderance of the evidence Respondent was not using its registered mark from at least, 2007 to 2016. This period of more than 3 consecutive years of nonuse establishes a prima facie showing of abandonment, and a rebuttable presumption that Respondent abandoned the mark without an intent to resume use. C. Respondent’s Arguments and Reasons For Nonuse of Its Mark Because we find Respondent failed to use its registered PEE WEE mark in the United States from at least, 2007 to 2016, a prima facie showing and presumption of abandonment exists. The “presumption shifts the burden to the registrant to produce evidence that he ... intended to ... commence use” during that period of nonuse. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998). This requires 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.” See Imperial Tobacco Ltd., 14 USPQ2d 1394-95. “Conclusory statements, even if sworn, regarding intent -- intent to resume or intent to commence -- are insufficient to rebut a prima facie case of abandonment.” Wirecard 41 We further note that the Dolls magazine evidence does not appear to depict Respondent’s registered mark in its stylized format: . Cancellation No. 92070091 18 v. Striatum Ventures, 2020 USPQ2d 10086, *7 (citing Imperial Tobacco, 14 USPQ2d at 1394-95); compare Rivard v. Linville, 45 USPQ2d at 1376 (“A registrant’s proclamations of his intent to resume or commence use in United States commerce during the period of nonuse are awarded little, if any, weight.”), with Oromeccanica, Inc. v. Ottmar Botzehnardt, 223 USPQ 59 (TTAB 1983) (no abandonment where registrant started a market survey in the United States before initiation of cancellation proceedings and continued the survey throughout the proceedings), and Reynolds Televator v. Pfeffer, 173 USPQ 437 (TTAB 1972) (no abandonment based on testimony showing limited market for goods, registrant’s continuous efforts to obtain financial backing for building a prototype, and registrant’s efforts over several years to interest customers in the United States). In its brief, Respondent attempts to explain why it did not use or had lower sales of its PEE WEE dolls for, at least, part of the nonuse period. Specifically, Respondent argues that: (1) “the evidence of record shows that despite Respondent’s best efforts, the market for certain toys changes over time and, until recently, the market for small dolls like the PEE WEE dolls had taken a downturn until the last couple of years”; and (2) “much of the blame for Respondent’s poor sales are ironically due to Petitioner’s own arrest and legal difficulties.”42 In support, Respondent relies entirely on its testimony.43 To the extent that Respondent’s arguments are attempts to overcome or rebut the 42 39 TTABVUE 20. 43 Respondent references 30 TTABVUE 21-22 (Hogge Dep. 49:1-50:25 and 52:1-53:25). Cancellation No. 92070091 19 prima facie showing of abandonment by showing excusable nonuse for the period of 2007 to 2017, we are not convinced. As to the purported market downturn for small dolls, Respondent testified that it did not perform or rely on market studies relating to small dolls but “based this [purported market downturn for small dolls] on what’s happening with sales at other, you know, other companies with collectible-type small dolls.”44 Similarly, with respect to Respondent’s argument that “poor sales” can be attributed to Petitioner’s “arrest and legal difficulties,” Respondent merely testified that Petitioner was “arrested in a movie theater,” and could not identify any particular period of time for any “negative effect” arising from the arrest.45 Respondent testified that it learned of this “negative association” based on “comments” from buyers. However, when asked about what was the “general nature” of the comments, Respondent testified, “I don’t know. They weren’t really saying. They just say his name and just say, you know, that’s a weird doll or a weird name for a doll now.”46 This testimony, and putting aside the hearsay nature it, is hardly probative because it is extremely vague. Respondent has not corroborated or buttressed this testimony. In sum, Respondent’s arguments and evidence fail to show that either it did use the registered mark during that between 2007 and 2016, or that it had an intent to 44 30 TTABVUE 22 (Hogge Dep. 50:21-23). 45 Id. (Hogge Dep. 52:4,12). 46 Id. (Hogge Dep. 52:22-53:3). Cancellation No. 92070091 20 resume use of the mark. D. Conclusion - Respondent Abandoned Its Registered Mark Petitioner has established a prima facie case of abandonment by proving by a preponderance of the evidence that Respondent did not use its mark on dolls and doll accessories between 2007 and 2016. Respondent failed to rebut this showing of abandonment by showing an intent to resume use during that time period or that its non-use was otherwise excusable. Decision: The Petition for Cancellation on the ground of abandonment is granted.47 47 We need not reach the merits of Petitioner’s fraud ground for cancellation in view of finding that Respondent abandoned the registered mark. See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013).