Spanishtown Enterprises, Inc.v.Transcend Resources, Inc.

Trademark Trial and Appeal Board

Jun 22, 2021

92070340 (T.T.A.B. Jun. 22, 2021)

Webster
June 22, 2021

Cancellation No. 92070340

Spanishtown Enterprises, Inc.

v.
Transcend Resources, Inc.

Before Thurmon, Deputy Chief Administrative Trademark Judge, and
Shaw and Larkin, Administrative Trademark Judges.

By the Board:

Spanishtown Enterprises, Inc. (“Petitioner”) seeks cancellation of the subject
registration on grounds of (1) likelihood of confusion; (2) abandonment; and (3)
nonuse or, in the alternative, unlawful use.1 Respondent, in its amended answer,
denies the salient allegations supporting the claims and asserts that Petitioner lacks
the capacity to litigate this proceeding.
This case now comes up on Petitioner’s motion (filed January 8, 2021) for partial
summary judgment on its unlawful use claim and Respondent’s cross-motion (filed

1 The subject registration (No. 4842927) issued on October 27, 2015 from an application filed
on February 2, 2015. Respondent filed its statement of use on August 18, 2015, alleging first
use of the mark and first use in commerce at least as early as August 18, 2015. On October
30, 2017, Respondent filed a request for correction of the registration under Section 7 of the
Trademark Act, 15 U.S.C. § 1057, requesting amendment of the date of first use and date of
first use in commerce to May 16, 2014.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92070340

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February 8, 2021) for partial summary judgment on the issue of priority on
Petitioner’s likelihood of confusion claim, Petitioner’s claims of abandonment and
nonuse, and Respondent’s lack of capacity defense. The motions are fully briefed.
By way of background, on November 23, 2020, the Board issued an order denying
Respondent’s first motion for summary judgment based on Respondent’s allegation
that Petitioner lacked entitlement to bring a cause of action for likelihood of confusion
based on a claim of priority of use by its individual owners/predecessors-in-interest.
22 TTABVUE 11. The Board also denied summary judgment based on Respondent’s
assertion that Petitioner lacks the capacity to litigate this proceeding because
Respondent had failed to provide Petitioner with fair notice of the defense. Id. at 8-9.
The Board, however, allowed Respondent time to file an amended answer asserting
the lack of capacity defense as a specific denial in accordance with Fed. R. Civ. P.
9(a)(2). Id. at 9. Respondent then filed an amended answer asserting the lack of
capacity defense. 23 TTABVUE.
I. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to any material facts and the moving party is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary
judgment, the evidentiary record must be viewed in the light most favorable to the
non-moving party and all justifiable inferences to be drawn from the undisputed facts
must be drawn in favor of the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Olde Tyme Foods Inc.
Cancellation No. 92070340

3
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992). We may not
resolve disputes of material fact; we may only ascertain whether a genuine dispute
regarding a material fact exists. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde
Tyme Foods, 22 USPQ2d at 1544.
The party moving for summary judgment has the burden of demonstrating that a
particular fact cannot be disputed by citing to particular parts of materials in the
record, including affidavits or declarations, admissions or interrogatory answers; or
showing that the cited materials do not establish the absence or presence of a genuine
dispute, or that the adverse party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). This burden may be met by showing “that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 323-24. If the moving party carries its
burden, the nonmoving party may not rest on mere allegations, but must designate
specific portions of the record or produce additional evidence showing the existence
of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn
Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007); see also Fed. R. Civ. P.
56(c)(1).
II. Petitioner’s Motion for Summary Judgment
By its motion for partial summary judgment, Petitioner argues that the
underlying application to register the subject mark is void ab initio because
Respondent admits in its response to interrogatories that it did not receive Certificate
of Label approval (COLA) from the Alcohol and Tobacco Tax and Trade Bureau (TTB)
Cancellation No. 92070340

4
as required under Section 205(e) of the Federal Alcohol Administration Act (FAAA),
27 U.S.C. § 205(e), until May 10, 2016, after the filing date of its statement of use and
the deadline for filing the statement of use. 24 TTABVUE 5. Petitioner asserts that
because Section 205(e) of the FAAA prohibits the bottling of wine without a COLA,
any bottling and sale in the United States without a COLA “is illegal because it is a
per se violation of the FAAA.” Id. at 7. Petitioner argues that the labeling provision
of Section 205(e) is “focused on protecting and informing consumers,” id., and is
“material to the wine business and regulatory scheme.” Id. at 8. Thus, according to
Petitioner, “[t]here is a clear nexus here between the application-relevant activities
and the violation of the FAAA.” Id. at 11.
In response to Petitioner’s motion, Respondent argues that Section 205(e) of the
FAAA only applies “to the sale of wine in interstate commerce.” 26 TTABVUE 10.
Respondent, through the declaration of its Secretary and winemaker, Kenneth
Gummere, claims that Respondent’s first lawful use in commerce was on May 16,
2014 when it sold “PURISIMA 2013 Zotovich Vineyard Chardonnay in Respondent’s
tasting room located [in] Lompoc, California.”2 Mr. Gummere also claims that since
Respondent’s first use of the mark, it has made wholesale sales of wine bearing the
PURISIMA mark outside of its tasting room but that the wine “has not been offered
for sale outside the State of California.”3 Respondent argues that such use of the mark
is not use in interstate commerce and does not require a COLA because “[t]he public

2 Gummere Declaration at ¶ 2, 26 TTABVUE 22.
3 Id. at ¶¶ 11, 12, 26 TTABVUE 24-25.
Cancellation No. 92070340

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policy for the COLA requirements in 27 C.F.R. § 4.50 is to prevent the sale or
shipment or other introduction in interstate or foreign commerce of wine bearing
labels that deceive the consumer on the origin of wine and/or the location of the grapes
harvested to make the wine.” Id. at 11-12 (emphasis in original).
In reply, Petitioner argues that the FAAA requires a COLA or a Certificate of
Exemption before bottling; thus, “[t]he fact that Respondent did not sell wine outside
of California is irrelevant.” 28 TTABVUE 5-6. In addition, Petitioner contends that
the Board’s recent decisions regarding the use of marks in connection with illegal
marijuana related goods and services “stand for the proposition that proof of the
elements outlined in [General Mills v. Health Valley Foods24 USPQ2d 1270 (TTAB
1992)] is not required where there is a per se violation of Federal law.” 28 TTABVUE
10.4
A. Evidentiary Issues
In support of its motion for summary judgment, Petitioner has submitted the
following evidence, among other items:5 (a) the declaration of Jamie Baddour,
General Manager and co-owner of Petitioner;6 (b) the expert declaration of K.

4 The Board has considered all of the arguments and evidence submitted in connection with
the motion, but does not repeat or discuss all of the arguments and submissions. Guess? IP
Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
5 Petitioner also submitted a copy of the current information for the subject registration and
copies of documents from the application file of the subject registration downloaded from the
USPTO’s TESS database. Under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the
evidentiary record in a Board proceeding includes, without any action by the parties, the file
of any application or registration that is the subject of the proceeding. Thus, the submission
of these documents is unnecessary.
6 24 TTABVUE 14-15.
Cancellation No. 92070340

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Christopher Branch;7 and (c) Respondent’s Responses to Petitioner’s First Set of
Interrogatories.8 Respondent, however, has asserted objections to certain statements
made in the Baddour and Branch declarations. We first consider Respondent’s
objections.
1. Baddour Declaration
Respondent objects to statements in the Baddour declaration supporting
Petitioner’s “Undisputed Facts” Nos. (7) through (9) on grounds of speculation and
hearsay because “Jamie Baddour attempts to testify as to what Ulrike Bisono, Cesar
Bisono, and Petitioner did or didn’t do prior to Jamie Baddour becoming the General
Manager in late June 2020 for Petitioner.” 26 TTABVUE 7.
Under Fed. R. Civ. P. 56(c)(4), an affidavit or declaration may be submitted in
support of, or in opposition to, a motion for summary judgment provided that it is
made on personal knowledge, sets out facts that would be admissible in evidence, and
shows that the affiant or declarant is competent to testify on the matters stated. “[A]n
affidavit or declaration can adequately support a motion for summary judgment when
the affiant or declarant’s position with the employer renders him or her competent to
provide the testimony on the particular issues which the affidavit concerns.” Ava
Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1578 (TTAB 2015).
Paragraph Nos. 7 through 9 of Petitioner’s “Undisputed Facts” assert facts
regarding the date on which Petitioner received a COLA for its PURISSIMA vodka,

7 Id. at 16-33.
8 Id. at 52-65.
Cancellation No. 92070340

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its date of first use of the PURISSIMA mark, and the status of its pending application
for the mark. 24 TTABVUE 4. Ms. Baddour attests that she has personal knowledge
of the statements in the declaration supporting these facts.9 See Fed. R. Evid. 602.
Because Ms. Baddour, as General Manager and an owner of Petitioner, has access to
the files and records of Petitioner, she is competent to testify regarding the relevant
facts asserted in her declaration. See, e.g., Sheet Metal Workers’ Int’l. Assoc. Local
Union v. Madison Indus., Inc., 84 F.3d 1186, 1193 (9th Cir. 1996) (personal knowledge
of general manager could be inferred from his position within the company). Her
personal knowledge of the facts may be based on discussions concerning the subject
matter with other knowledgeable officers or employees. See In re DBC, 545 F.3d 1373,
89 USPQ2d 123, 1131 (Fed. Cir. 2008). In view of the foregoing, Respondent’s
objection to certain portions of the Baddour declaration based on speculation and
hearsay is overruled.
2. Branch Declaration
Respondent objects to paragraph No. 29 of the Branch declaration on grounds that
the statements therein regarding whether Respondent’s goods “were sold interstate”
are based on “improper expert methodology and the epitome of speculation.” Id. at
11. Respondent’s objection to paragraph No. 29 is overruled to the extent that Mr.
Branch has given his opinion regarding factual questions regarding the actions of
wine brokers/distributors based on his experience in the wine industry.10 See 4 J.

9 Baddour Decl. at ¶¶ 1, 4-6. 24 TTABVUE 14.
10 Branch Decl. at ¶¶ 6-8, 24 TTABVUE 17-18.
Cancellation No. 92070340

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THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:2.75
(5th ed. 2021) (“[O]n a motion for summary judgment … the law gives the judge a
wide scope of discretion to read expert affidavits or hear expert testimony which will
assist in reaching an informed decision.”). However, we have given no consideration
to Mr. Branch’s legal conclusions that Respondent’s goods travel in interstate
commerce and that Respondent’s sales prior to the issuance of a COLA in 2016 were
illegal. See Commodores Entm’t Corp. v. McClary, 879 F.3d 1114, 125 USPQ2d 1302,
1310-11 (11th Cir. 2018) (Finding it was proper to exclude attorney witness’
testimony regarding ownership of the mark, Courts stated, “questions of law are not
subject to expert testimony”) cert. denied, 139 S.Ct. 225 (Oct. 1, 2018).
B. Petitioner’s Entitlement to a Statutory Cause of Action11
Whether the plaintiff is entitled to a statutory cause of action is a threshold issue
in every inter partes proceeding. 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, 2066
(2014)). To establish entitlement to a statutory cause of action under Sections 13 and
14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, a plaintiff must demonstrate
that cancellation of the registration is within the zone of interests protected by the
statute and that plaintiff has a reasonable belief of damage proximately caused by
continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,

11 We noted in our earlier order that the issue of whether a party is entitled to a statutory
cause of action under Sections 13 and 14 of the Trademark Act was previously discussed
under the rubric of “standing.” 22 TTABVUE 2-4.
Cancellation No. 92070340

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2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco
v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir.
2012).
Here, Petitioner has established its entitlement to bring a statutory cause of
action through the uncontradicted declaration testimony of Ms. Baddour, who attests
that Petitioner and its predecessors in interest have been using the mark
PURISSIMA in connection with vodka since 2014.12 See, e.g., Double Coin Holdings
Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *4 (TTAB 2019) (standing established by
testimony, with exhibits, of use of confusingly similar mark); Grand Canyon West
Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1502 (TTAB 2008) (standing
established by testimony as to prior use of similar mark); see also Liqwacon Corp. v.
Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may
be sufficient to establish both prior use and continuous use when the testimony is
proffered by a witness with knowledge of the facts and is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its probative value).
Accordingly, we find that there is no genuine dispute regarding Petitioner’s
entitlement to a statutory cause of action to bring this cancellation. Respondent’s lack
of capacity defense is discussed below.

12 Baddour Decl. at ¶¶ 2, 3, 6, 24 TTABVUE 14.
Cancellation No. 92070340

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C. Petitioner’s Unlawful Use Claim
Turning to the merits of Petitioner’s unlawful use claim, the Board, in considering
whether the use of a mark is lawful under one or more regulatory acts, considers the
following: (1) whether a court or government agency having competent jurisdiction
under the statue involved has previously determined that the party is not in
compliance with the relevant statue; or (2) whether there is a per se violation of a
statute regulating the sale of a party’s goods. Gen. Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270, 1273-74 (TTAB 1992).
Here, Petitioner argues that Respondent’s failure to obtain a COLA for its wine
bearing the subject mark until May 10, 201613 is a per se violation of the FAAA
statute.14 A party charging that use by the adverse party was unlawful due to
noncompliance with a labeling statute must demonstrate by clear and convincing
evidence not only that the use violated the applicable law, but also “that the non-
compliance was material, that it was of such gravity and significance that the usage
must be considered unlawful – so tainted that, as a matter of law, it could create no
trademark rights – warranting cancellation of the registration of the mark involved.”

13 Petitioner cites to Respondent’s Response to Petitioner’s Interrogatory No. 17 for the date
the COLAs were issued. 24 TTABVUE 60.
14 The notice of allowance in the underlying application for registration issued on August 18,
2015, the same day Respondent filed its statement of use. However, during ex parte
examination, a party may amend its statement of use at any time prior to the deadline for
filing the statement of use as extended. See Trademark Rule 2.71(c)(2), 37 C.F.R. § 2.71(c)(2);
Embarcadero Tech., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1524-25 (TTAB 2016). Thus, in
an inter partes proceeding, “the Board also will consider evidence of use which occurred after
the filing of the statement of use but within the original or extended period for filing the
statement of use.” Embarcadero Tech., Inc., 117 USPQ2d at 1524. Therefore, in this case, the
Board may consider evidence of lawful use until February 18, 2016, Respondent’s deadline
for filing the statement of use.
Cancellation No. 92070340

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Id.; see also Satinine Societa in Nome Collettivo Di S.A. e.M. Usellini v. P.A.B.
Produits Et Appareils De Beaute, 209 USPQ 958, 964-65 (TTAB 1981).
Although Petitioner argues, based on its testimony evidence, that the COLA
requirement is a material part of the statutory scheme,15 Petitioner has not
submitted any evidence that Respondent’s asserted noncompliance with the statutory
requirement for label approval was material, or so significant that Respondent’s use
of the subject mark in connection with the goods prior to receiving a COLA was “so
tainted that, as a matter of law, it could create no trademark rights – warranting
cancellation of the registration.” Gen. Mills, 24 USPQ2d at 1274. Petitioner asserts
that the labeling provision is “focused on protecting and informing consumers.” 24
TTABVUE 7. However, there is no evidence in the summary judgment record that
Respondent’s use of the mark on labels prior to its deadline for filing the statement
of use was deceptive or that the labels failed to inform consumers of material facts,
even though Respondent received a COLA less than three months after the deadline
for filing the statement of use. See Satinine Societa, 209 USPQ at 965 (“[T]he proofs
submitted by the party charging noncompliance must leave no room for doubt,
speculation, surmise or interpretation”).16
The cases relied on by Petitioner in its motion for summary judgment are
inapposite because in those cases, unlike here, the question of lawful use was not
raised by an adverse party who bears the burden of demonstrating “by clear and

15 24 TTABVUE 8, 28 TTABVUE 10.
16 We note that “an up-to-date copy of the statue in question, together with any pertinent
rules” should be submitted with the motion. Satinine Societa, 209 USPQ at 965.
Cancellation No. 92070340

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convincing evidence more than that the use in question was not in compliance with
applicable law.” Gen. Mills, 24 USPQ2d at 1274. See Stawski v. Lawson, 129 USPQ2d
1036, 1048 (TTAB 2018) (concurrent use applicant failed to prove lawful use in
commerce by a preponderance of the evidence as a jurisdictional precondition for
concurrent use registration under Trademark Act Section 2(d)); Tassel Ridge Winery,
LLC v. WoodMill Winery, Inc., 2013 WL 5567505, at *6 (W.D.N.C. 2013) (defendant
could not show lawful use prior to receiving a COLA for purposes of establishing
priority). Where a party seeks cancellation of a registered mark due to technical
noncompliance with a statute, the party bears a heavy burden of proving unlawful
use under General Mills and the Board keeps in mind that cancellation of the
registration may be a “Draconian result.” Gen. Mills, 24 USPQ2d at 1273. Moreover,
the burden of proof on summary judgment is greater than at trial because Petitioner
must establish that there is no genuine dispute of material fact that the registration
is void ab initio due to unlawful use. See Fed. R. Civ. P. 56(d); cf. Gasser Chair Co. v.
Infanti Chair Mfg. Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995).17

17 Petitioner’s arguments in its reply brief that the requirements for proving unlawful use set
forth in General Mills do not apply to the bottling and sale of wine without a COLA, and that
such activities are per se illegal under the Board’s more recent cannabis line of cases, 28
TTABVUE 9-10, are unsupported and misplaced. The cannabis cases are distinguishable
from this case because they involved goods or services that, unlike wine, were themselves
illegal under federal law. See MCCARTHY ON TRADEMARKS § 19:123 (“[T]he Board rejects the
view that every technical labeling law violation disqualifies a trademark use as ‘unlawful.’
Rather, the Board adopts a case-by-case policy of rejecting a use as ‘unlawful’ only in cases of
clear, serious and material violations such as the use of a mark on a drug declared illegal
under federal law.” (citing General Mills, 24 USPQ2d at 1274)); see also TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) § 907 (Oct. 2018) (in contrast with an application where
the record indicates that the goods or services violate a federal law such as the Controlled
Substances Act, “the USPTO does not routinely solicit information regarding label approval
under the [FAAA] or similar acts”).
Cancellation No. 92070340

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In this case, we find that Petitioner has failed to carry its burden of establishing
that there is no genuine dispute of material fact that, as a matter of law, Respondent
created no trademark rights in its mark prior to the deadline for filing its statement
of use because its use of the mark was prior to its receipt of a COLA and thus was not
in compliance with the labeling regulations under the FAAA. Accordingly,
Petitioner’s motion for summary judgment is denied with respect to the unlawful
use claim.
III. Respondent’s Cross-Motion for Summary Judgment
A. Priority and Nonuse in Commerce Claim
Turning to Respondent’s cross-motion for summary judgment, Respondent argues
that it has priority of use over Petitioner because Respondent sold wine bearing the
PURISIMA mark in its tasting room on May 16, 2014 and subsequently sold wine
through at least one bar in California beginning in November 2014.18
However, in order to establish use in commerce, such use must be lawful. See
Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) (“‘[U]se in
commerce’ means ‘lawful use in commerce’”); Tassel Ridge Winery, 2013 WL 5567505,
at *5 (“[C]ommercial use that constitutes a per se violation of a federal statute is not
lawful and cannot establish priority for trademark rights” (citing Gen. Mills, 24
USPQ2d at 1273)). When a regulatory statute requires a party’s labels to be
registered with or approved by the regulatory agency charged with administering the
statute before the goods may lawfully enter the stream of commerce, and the party

18 Gummere Declaration at ¶¶ 2, 11 26 TTABVUE 22, 24.
Cancellation No. 92070340

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has failed to obtain such registration or approval prior, any use prior to registration
or approval may be deemed unlawful. Satinine Societa, 209 USPQ at 965.
As discussed above, the summary judgment record shows that Respondent did not
receive a COLA for bottling and selling wine under the subject mark until May 10,
2016, long after its claimed first sales.19 We find Respondent’s argument that it was
not required to obtain a COLA for its alleged intrastate use insufficient to establish,
as a matter of law, that its first use of the subject mark in tasting rooms and wine
bars prior to receiving a COLA was lawful use in commerce.20 See Tassel Ridge
Winery, 2013 WL 5567505, at *6 (“According to 27 C.F.R. § 4.50, an approved COLA
… must be issued before wine can be lawfully bottled or sold.”); see also Stawski v.
Lawson, 129 USPQ2d at 150 (use of mark in commerce on wine bottles “[is] subject
to COLA requirements”).
In addition, with respect to Petitioner’s claim that the registration is void ab initio
due to nonuse, Respondent has failed to show that there is no genuine dispute that
its failure to obtain a COLA was not material, or that its failure did not prevent
Respondent from obtaining rights in the mark prior to the deadline for the statement
of use.
Accordingly, Respondent’s motion for partial summary judgment is denied with
respect to the issue of priority and Petitioner’s nonuse claim.

19 Respondent’s Responses to Petitioner’s First Set of Interrogatories, No. 17, 24 TTABVUE
60.
20 Absent clear and convincing evidence that the registration is void, Respondent may rely on
the February 2, 2015 filing date of the underlying application for registration as its
constructive first use date.
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B. Abandonment Claim
Regarding the abandonment claim, a mark is deemed abandoned under Section
45 of the Trademark Act under the following circumstances: “[w]hen its use has been
discontinued with intent not to resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for three consecutive years shall be prima facie evidence
of abandonment.” 15 U.S.C. § 1127. Because a registration is presumed valid under
Trademark Act Section 7(b), 15 U.S.C. § 1057(b), the party seeking cancellation of a
registration based on abandonment bears the burden of proving a prima facie case by
a preponderance of the evidence. Noble House Home Furnishings, LLC v. Floorco
Enters. LLC, 118 USPQ2d 1413, 1417 (TTAB 2016); see also Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 191 (CCPA 1982).
Respondent states that it last bottled wine bearing the mark on January 15, 2020.
26 TTABVUE 16. Id. Respondent asserts that it “has not abandoned its PURISIMA
mark and Petitioner cannot offer evidence to the contrary.” In support of its claim
that it has not abandoned the mark, Respondent has submitted the declaration of
Chris Bellamy, the operations manager for La Purisima Golf Course, who testifies
that he “regularly purchased wine bearing the PURISIMA mark from [Respondent]
for resale in the restaurant at La Purisima Golf Course from on or about May 8, 2017
through on or about February 5, 2019.”21 Mr. Bellamy further states that he intends

21 Declaration of Chris Bellamy at ¶ 3, 26 TTABVUE 20.
Cancellation No. 92070340

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to purchase more of the wine “after the COVID-19 restrictions for restaurants are
lifted in the State of California.”22
Petitioner has not submitted any arguments or evidence in response to
Respondent’s motion for summary judgment on the abandonment claim. Petitioner
merely asserts that if the Board finds that Respondent’s alleged use of the mark prior
to obtaining a COLA was unlawful, “the priority and abandonment issues would be
moot.” 29 TTABVUE 8.23
Where the non-moving party bears the burden of proof on the claim at trial, the
moving party may discharge its burden on summary judgment by showing that there
is a lack of evidence to support the non-moving party’s claim. Celotex Corp. v. Catrett,
477 U.S. at 325. The burden then shifts to the non-moving party to come forward with
evidence showing that there is a genuine dispute for trial. Id. at 324; see also Venture
Out Props. LLC v. Wynn Resort Holdings LLC, 81 USPQ2d at 1890 (“The nonmoving
party may not rest on the mere allegations of its pleadings and assertions of counsel,
but must designate specific portions of the record or produce additional evidence
showing the existence of a genuine issue of material fact for trial.”); Fed. R. Civ. P.
56(e).
Here, Respondent has discharged its burden on summary judgment by providing
declaration testimony regarding its use of the mark on wine within the last three
years and pointing out that Petitioner lacks evidence of Respondent’s intent not to

22 Id. at ¶ 6.
23 Under the heading “The Priority and Abandonment Claims,” 29 TTABVUE 8, Petitioner
only contests Respondent’s allegations of use of the mark in 2014.
Cancellation No. 92070340

17
resume use.24 Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316
(TTAB 1979) (oral testimony may be sufficient to establish continuous use). Despite
sufficient time for discovery on the issues,25 Petitioner has failed to submit any
evidence contradicting the declaration of Respondent’s witness or that would raise a
genuine dispute regarding Respondent’s intent to resume use of its mark. In view
thereof, we find that Respondent is entitled to judgment as a matter of law with
respect to Petitioner’s abandonment claim. Celotex Corp., 477 U.S. at 322-23
(summary judgment should be entered against a party who fails to make a showing
after adequate time for discovery). Accordingly, Respondent’s cross-motion for
summary judgment is granted in part with respect to the abandonment claim.
C. Respondent’s Lack of Capacity Defense
Respondent, in its amended answer (filed December 12, 2020), asserts that
“Petitioner, as a suspended corporate litigant, lacks capacity to litigate this
cancellation proceeding.” 23 TTABVUE 4. Respondent argues that Petitioner is
prohibited from litigating this proceeding under Fed. R. Civ. P. 17(b) because
Petitioner, a corporation organized under the laws of California, is suspended from
doing business for failure to pay its taxes in California.26 26 TTABVUE 13.

24 In its amended petition for cancellation, Petitioner’s alleges that Respondent has ceased
using the subject mark “with the intention of not resuming its use.” Amended Petition for
Cancellation at ¶ 9, 9 TTABVUE 4.
25 Discovery in this case was set to close on January 11, 2021, three days before Petitioner
filed its motion for summary judgment. 22 TTABVUE 11. In addition, Petitioner states that
“the parties have engaged in substantial discovery.” 29 TTABVUE 8.
26 Respondent submitted a Certificate of Status for Petitioner, dated April 28, 2020, issued
by the California Secretary of State. Exhibit 4 to Bowker Declaration, 26 TTABVUE 181. The
Certificate identifies Petitioner’s status as “Suspended.”
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18
Respondent contends that the Board should enter summary judgment against
Petitioner in view of the suspension because allowing Petitioner to proceed with the
cancellation is a waste of public, private and Board resources and “is a run around of
[sic] the intent of [California Tax Code] Section 23301 as it permits Petitioner to do
that which it is prohibited from doing – litigating its case without paying its taxes –
and as such, incentivizes non-compliance with Section 23301.” Id. at 13-14.
Petitioner argues that because the Board is not a federal court, the ability to
appear before the Board is determined by the Lanham Act, not Federal Rule 17. 29
TTABVUE 4. Petitioner further argues that because it is still a juristic person who
believes that it is or will be damaged by the registration, Petitioner may petition to
cancel the mark despite its suspended corporate status. Id.27
Respondent’s arguments for entering judgment based on lack of capacity are
unsupported. In our prior order denying Respondent’s first motion for summary
judgment, we noted that the Board has previously found that a corporation which has
been suspended for failure to pay taxes and file returns may, upon revival, proceed
with the prosecution or defense of a Board proceeding. 22 TTABVUE 9 n.10 (citing
WMA Grp. Inc. v. W. Int’l Media, 29 USPQ2d 1478, 1479 (TTAB 1993). In addition,
in Stock Pot Rest., Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 668 (Fed. Cir.
1984), the U.S. Court of Appeals for the Federal Circuit held that even the temporary

27 Section 45 of the Trademark Act broadly defines the term “person” under the Act as
including, among other things, “a juristic person as well as a natural person.” 15 U.S.C.
§ 1127. “The term ‘juristic person’ includes a firm, corporation, union, association, or other
organization capable of suing and being sued in a court of law.” Id.
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dissolution of the corporate plaintiff would not require dismissal of the proceeding
and that, upon revival, all acts of the plaintiff done during the period of dissolution
“stand as if it had not been dissolved.” Cf. Brewski Beer Co. v. Brewski Bros Inc., 47
USPQ2d 1281, 1286 (TTAB 1998) (Board found that even though respondent’s
corporate charter was suspended for three years, respondent “continuously existed”
and sold goods under the mark since the date of first use). In its current motion for
summary judgment, Respondent has failed to establish that, despite the foregoing
precedential decisions, the Board should enter judgment as a matter of law against
Petitioner in this proceeding as a result of its current status as a suspended
corporation in the State of California.
In view of thereof, Respondent’s cross-motion for summary judgment is denied
with respect to its assertion that Petitioner lacks the capacity to litigate this
proceeding.
IV. Summary
In summary, because we have found that Petitioner has shown that there is no
genuine dispute that it is entitled to bring a statutory cause of action, summary
judgment is granted to Petitioner, in part, with respect to its entitlement to bring
the cause of action. Petitioner’s motion for summary judgment is denied with respect
to the unlawful use claim.
Respondent’s cross-motion for summary judgment is granted, in part, with
respect to the abandonment claim. Accordingly, the petition for cancellation on the
ground of abandonment is denied. Respondent’s cross-motion is denied, in part, with
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20
respect to priority, the nonuse claim, and Respondent’s assertion that Petitioner lacks
the capacity to litigate the proceeding.28
Because multiple motions for summary judgment have been filed in this
proceeding, the Board will not consider any further motions for summary judgment.
Proceedings herein are suspended pending the removal of Petitioner’s corporate
status from suspension by the Secretary of State of the State of California. See
Trademark Rule 2.117(c), 37 C.F.R. § 2.117(c) (“Proceedings may be suspended sua
sponte by the Board”). Petitioner is allowed until SIXTY DAYS from the mailing date
of this order to provide the Board with an update on its corporate status.

28 The fact that we have identified only certain genuine disputes as to material facts should
not be construed as a finding that these are necessarily the only disputes which remain for
trial. In addition, we note that the evidence submitted in connection with a motion for
summary judgment or opposition thereto is of record only for consideration of that
motion. Any such evidence to be considered at final hearing must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear
Inc., 28 USPQ2d 1464 (TTAB 1993).