ZAO Gruppa Predpriyatij OSTv.ZAO Odessky Konjatschnyi Zawod ZAO Odessky Konjatschnyi Zawod v. ZAO Gruppa Predpriyatij OST

Trademark Trial and Appeal Board

Feb 8, 2012

No. 91161570 (T.T.A.B. Feb. 8, 2012)

Mailed: February 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

ZAO Gruppa Predpriyatij OST

v.

ZAO Odessky Konjatschnyi Zawod
_____

Opposition No. 91161570
to application Serial No. 78240612
filed on April 22, 2003
_____

ZAO Odessky Konjatschnyi Zawod

v.

ZAO Gruppa Predpriyatij OST
_____

Cancellation No. 92047126
against Registration No. 2885912
_____

Carla C. Calcagno of Calcagno Law and Maria Eliseeva of
Houston Eliseeva, LLP for ZAO Gruppa Predpriyatij OST.1

1 Review of the proceeding files reveals an appointment of
associate counsel on March 13, 2009, and a request to direct
correspondence to Maria Eliseeva at Houston Eliseeva, LLP, 4
Militia Drive, Suite 4, Lexington, Massachusetts 02421. In view
thereof, Gruppa’s correspondence address has been updated to
reflect that request. Nonetheless, the Board also forwards a
copy of this decision to the prior address of record, namely,
Carla Calcagno, Calcagno Law, 2300 M Street NW, Suite 800,
Washington, DC 20037.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161570; Cancellation No. 92047126
2
Julie B. Seyler of Abelman Frayne & Schwab for ZAO Odessky
Konjatschnyi Zawod.
______

Before Seeherman, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On April 22, 2003, ZAO Odessky Konjatschnyi Zawod
(Odessky) applied to register on the Principal Register the
mark SHUSTOFF, in typed form, for goods ultimately
identified as “alcoholic beverages except beers, namely
aperitifs with a distilled alcoholic liquor base; distilled
liquors; distilled spirits; wines; whisky; vodka; gin;
prepared alcoholic cocktails; liqueurs; distilled beverages;
bitters, namely schnapps and liqueurs; rum; liqueurs and
spirits in the nature of digestives; spirituous alcoholic
extracts,” in International Class 33. The application was
filed based on an allegation of an intention to use the mark
in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b).
On July 28, 2004, ZAO Gruppa Predpriyatij OST (Gruppa)
opposed registration of Odessky’s mark SHUSTOFF under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground of likelihood of confusion with its applied-for
and subsequently registered mark SHUSTOV and design.
Gruppa’s pleaded Registration No. 2885912 is for the mark
shown below for goods ultimately identified as “alcoholic
beverages, namely distilled spirits, distilled rice spirits,
Opposition No. 91161570; Cancellation No. 92047126
3
aperitif wines, alcoholic aperitif bitters, alcoholic honey
drink, peppermint schnapps; alcoholic fruit-based beverages;
sake; gin; rum; liqueurs, whiskey; brandy; vodka.”2
3
The underlying application for Registration No. 2885912
was filed on May 23, 2003 under Section 44 of the Trademark
Act, 15 U.S.C. §1126, asserting a priority date under
Section 44(d) of December 11, 2002. The registration issued
under Section 44(e) on September 21, 2004.
On January 11, 2005, Odessky filed its answer in which
it denied the salient allegations and challenged Gruppa’s
rights in its asserted mark.
On February 22, 2007, Odessky petitioned to cancel
(Cancellation No. 92047126) Gruppa’s Registration No.
2885912 on the ground that Gruppa committed fraud in the

2 Gruppa’s original complaint asserted its application. After
the application issued into a registration, Gruppa moved to amend
its complaint to assert its registration. The Board granted this
motion on December 18, 2008.

3 Throughout this opinion, all references to the SHUSTOV mark are
to this bell design mark.

Opposition No. 91161570; Cancellation No. 92047126
4
procurement of its registration.4 In addition, on February
16, 2010, Odessky moved to amend the pleadings to conform to
the evidence by adding a claim of abandonment, which we
address infra.
The opposition and cancellation proceedings were
consolidated on November 9, 2007.
EVIDENTIARY ISSUES
We first address the evidentiary issues that were
deferred until this final decision.
Motion to Strike Snell Testimony
During its rebuttal testimony period, on February 19,
2010, Odessky took the testimony of Mr. Thomas C. Snell.
Odessky presented Mr. Snell as an expert witness. Gruppa
moves to strike the testimony because Odessky did not
disclose him in response to a discovery request.5 Odessky
did not present argument in response to Gruppa’s motion to
strike.
In support of its motion to strike the deposition,
Gruppa argues that “the information proffered in said
testimony was not identified or produced in discovery, and
was knowingly withheld by Applicant in violation of its duty

4 On April 15, 2008, the Board struck from the petition Odessky’s
other asserted claims of non ownership and “bad faith” and its
similar affirmative defenses in its answer challenging Gruppa’s
then-application asserted in the opposition.

5 Gruppa asserted its objection during the testimony deposition
and preserved this objection in its brief on the case.
Opposition No. 91161570; Cancellation No. 92047126
5
to disclose and supplement disclosure.” Gr. Br. pp. 11-12.
Gruppa’s Interrogatory No. 25 and Odessky’s response read as
follows:
Interrogatory No. 25: Identify each person whom
Applicant expects to call as an expert witness at
trial, state the subject matter on which the
expert is expected to testify, and state the
substance of the facts and opinions to which the
expert is expected to testify and a summary of the
grounds for each opinion.

Response: Applicant has not yet determined if it
will call any expert witnesses at trial.

By this interrogatory, Gruppa expressly requested that
Odessky identify each person whom Odessky expected to call
as an expert at trial, to state the subject matter on which
the expert was expected to testify, and state the substance
of the facts and opinions to which the expert was expected
to testify and a summary of and the grounds for each
opinion. Applicant failed to identify any persons in
response to the interrogatory.
The Snell deposition was not taken during Odessky’s
case in chief but rather was taken on the last day of
Odessky’s extended rebuttal period. Odessky did not
supplement any of its discovery responses prior to the
taking of the expert testimony on February 19, 2010, nor
provide any forewarning to Gruppa of the expert testimony to
be taken. Gruppa Br. p. 12.
Opposition No. 91161570; Cancellation No. 92047126
6
In view thereof, the Snell deposition is stricken.6 We
hasten to add that consideration of this deposition would
not have changed the result.
Odessky’s Motion To Strike Gruppa’s Notice of Reliance
On December 15, 2009, the Board deferred consideration
of Odessky’s substantive objections to Gruppa’s notice of
reliance on its own responses to Odessky’s interrogatories
nos. 1(b) and 7(a).7 A party cannot normally submit its own
responses to discovery under a notice of reliance except to
make not misleading partial responses submitted by the
inquiring party. See Trademark Rule 2.120(j)(5):
...an answer to an interrogatory, or an admission
to a request for admission, may be submitted and
made part of the record only by the receiving or
inquiring party except that, if fewer than all of
the written disclosures, answers to
interrogatories, or fewer than all of the
admissions, are offered in evidence by the
receiving or inquiring party, the disclosing or
responding party may introduce under a notice of
reliance any other written disclosures, answers to
interrogatories, or any other admissions, which
should in fairness be considered so as to make not
misleading what was offered by the receiving or

6 We note that the current rules require that disclosure of
expert testimony “must occur in the manner and sequence provided
in Federal Rule of Civil Procedure 26(a)(2) [and] [i]f the expert
is retained after the deadline for disclosure of expert
testimony, the party must promptly file a motion for leave to use
expert testimony.” Trademark Rule 2.120(a)(2).” However, this
change applies to proceedings that were filed on or after
November 1, 2007. Cf. Jules Jurgensen/Rhapsody Inc. v.
Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).

7 In compliance with that Board order, on January 4, 2010, Gruppa
resubmitted its notice of reliance further clarifying that it is
relying on its responses to interrogatories nos. 1(b) and 7(a)
which consist only of documents under Fed. R. Civ. P. 33(d) and
properly show the Bates numbers.
Opposition No. 91161570; Cancellation No. 92047126
7
inquiring party. The notice of reliance filed by
the disclosing or responding party must be
supported by a written statement explaining why
the disclosing or responding party needs to rely
upon each of the additional written disclosures or
discovery responses listed in the disclosing or
responding party’s notice, and absent such
statement the Board, in its discretion, may refuse
to consider the additional written disclosures or
responses.

Under a notice of reliance, Odessky submitted Gruppa’s
response to Interrogatory No. 6(a). The interrogatory and
response read as follows:
Interrogatory No. 6(a): State the reasons why
[Gruppa] adopted the trademark SHUSTOV.

Response: [Gruppa] objects to these
interrogatories numbered 6(a)-(c) on the ground
that they are vague, ambiguous, overly broad,
unduly burdensome ... (a) [Gruppa] adopted the
trademark SHUSTOV to serve as a brand name for its
vodka in the United States because it has been
using that mark in many countries for years and
wishes to maintain a common identity for its vodka
worldwide.

By its notice of reliance, Gruppa states that its
responses to interrogatories nos. 1(b) and 7(a) submitted
under Trademark Rule 2.120(j)(5) should be considered:
...so as to make not misleading what was offered
by the receiving or inquiring party.
Specifically, Applicant has relied on [Gruppa’s]
response to Interrogatory No. 6(a) to show that
[Gruppa] essentially has admitted that it has “no
bona fide intent to use” the mark on the goods
listed in the registration certificate in the
United States, other than vodka. Applicant’s
interpretation in its Notice of the import of
[Gruppa’s] answer to Interrogatory No. 6(a) is
both misleading and incorrect. These documents
reflect that prior to the filing of the
application that matured into [Gruppa’s]
registration, and with these interrogatory
Opposition No. 91161570; Cancellation No. 92047126
8
responses, [Gruppa] produced documents showing
that [Gruppa] and its predecessors already were
manufacturing, advertising, and promoting a wide
variety of SHUSTOV alcoholic beverages, not just
vodka. This supports [Gruppa’s] bona fide intent
to use the mark in the United States on all the
goods listed in the registration certificate, not
just vodka.

Amended NOR (January 4, 2010).
Odessky argues that the response to interrogatory no.
6(a) is not misleading and the responses to interrogatories
nos. 1 and 7 “bear no relationship or other connection to
Interrogatory No. 6(a) and as such neither clarify nor rebut
Interrogatory No. 6(a).” Od. Mot. to Strike p. 6 (November
6, 2009). Further, Odessky argues that “[a]lmost every
single document is in Russian and none have been translated
into English [and] foreign language documents that are
unaccompanied by a certified English translation should be
stricken from the record because they are unintelligible and
thus evidence of very little, if anything at all.” Id.
Gruppa responds that Odessky’s “construction of the
interrogatory response read in a vacuum is misleading.
Based on [Gruppa’s] discovery production, Odessky well knows
that throughout this case, in its discovery responses and in
its testimony, [Gruppa] has submitted evidence to show that
it intended, and still intends, to use its mark on all the
other products listed in its application, including vodka.
... As [Gruppa] already manufactures and sells a wide
variety of products under the SHUSTOV mark, [Gruppa] clearly
Opposition No. 91161570; Cancellation No. 92047126
9
is able to export these same goods to the United States.
This evidence is relevant to the Board’s construction of its
response to 6(a).” Gr. Response to Mot. To Strike pp. 7-8
(December 3, 2009).
As to the issue of the foreign language, Gruppa argues
that “most if not all of the foreign language documents were
supported by the testimony at the [Nataliya] Rybina
deposition [and] ... [i]t is simply wrong to say that all
the documents are in Russian. Some of the documents have
English translations and some bear English translations
directly on their face.” Id.
Subsequently, on January 27, 2010, Odessky filed a
notice of reliance, which included a chart analyzing
Gruppa’s document responses to interrogatories nos. 1(b) and
7(a).
We find that Gruppa’s submission is appropriate to the
extent that it provides the full context of Gruppa’s
response to Interrogatory No. 6(a). As to the lack of
translation, we first note that Odessky did not move to
compel Gruppa to provide translations during the discovery
period. We further note that in its January 27, 2010 notice
of reliance, Odessky has provided a substantive analysis of
these documents, indicating that Odessky apparently provided
its own translation. Nonetheless, for purposes of
submission to the Board, Gruppa would need to provide a
Opposition No. 91161570; Cancellation No. 92047126
10
translation for the documents to be considered. See Johnson
& Johnson v. Obschestvo’s ogranitchennoy; otvetstvennostiu
“WDS”, 95 USPQ2d 1567, 1570 fn. 3 (TTAB 2010). In view
thereof, Odessky’s motion to strike is granted to the extent
that the documents in Russian submitted under the January 4,
2010 notice of reliance have not been considered.
As noted above, Gruppa reintroduced several of these
documents through the testimony of its witness, Nataliya
Rybina, which was presented through an interpreter.
Generally, Ms. Rybina testified as to what they were, what
the pictures in the documents depicted, and, to a limited
extent, translations of the text. During Ms. Rybina’s
testimony, applicant asserted objections to certain
documents written in Russian based on the absence of
official translations. Applicant did not maintain these
objections in its main brief on the case. Applicant’s
reference to these objections in footnote 2 of its reply
brief is too late to maintain them.8 Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 104 (TTAB 2007). Moreover,
in addition to the fact that certain relevant text was
translated by the same person providing interpretation of

8 On page 20 of its main brief, Odessky states that Gruppa
“sought to introduce a range of exhibits, many of which are in
Russian (and no English translations have been provided) ...
However, when the hundreds of pages are reviewed in detail it
becomes apparent ...” This general statement is not sufficient
to preserve the objection and Odessky considers and discusses
Opposition No. 91161570; Cancellation No. 92047126
11
the testimony, applicant provides some of its own
translations and relies on certain of these documents. In
view thereof, to the extent Odessky’s objections to the
exhibits from the Rybina deposition were not waived they are
overruled. We note, however, that the probative value of
these documents is limited due to the absence of complete
translations, official or otherwise.
Odessky’s objections to Ms. Rybina’s competency to
testify as to various matters were maintained in its main
brief and have been considered in determining the probative
value of her testimony.
In view of the above, the record consists of: (1) the
files of the subject application and registration; (2)
Gruppa’s Notices of Reliance on (i) a status and title copy
of its registration and the underlying application, (ii)
Odessky’s responses to Gruppa’s first set of requests for
admissions and certain interrogatories, (iii) dictionary
definitions regarding the suffixes OV and OFF, (iv) Gruppa’s
responses to Interrogatories Nos. 1(b) and 7(a) (only the
documents in English); (3) Gruppa’s testimony deposition
with exhibits of Nataliya Rybina (Rybina), Gruppa’s former
employee; (4) Odessky’s Notices of Reliance on (i) two
Certificates of Label Approvals (COLAs) for labels
incorporating Gruppa’s SHUSTOV and bell design mark for

some of these documents on the merits, in addition to providing
Opposition No. 91161570; Cancellation No. 92047126
12
vodka, (ii) Gruppa’s response to Interrogatory No. 6(a),
(iii) third-party registrations, (iv) printouts from the
Alcohol and Tobacco Tax and Trade Bureau (TTB) website and
the USPTO Identification of Goods and Services Manual, and
(v) dictionary definitions.
PETITION TO CANCEL
Inasmuch as the opposition relies on Gruppa’s
registration for priority, we first consider Odessky’s
petition to cancel that registration.
STANDING
Odessky has established its standing based on Gruppa’s
opposition to Odessky’s application, wherein Gruppa relies
first on its application and subsequently on its issued
registration at issue in this proceeding. Finanz St. Honore
B. V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB
2007). In addition, by its answer Gruppa “admits that
[Gruppa] has opposed Application No. 78240612 for SHUSTOFF.”
Answer to Pet. ¶32.
FRAUD
On April 15, 2008, the Board clarified that Odessky’s
petition to cancel “will go forward on the fraud claim
only.”9 Board Order, p. 9.
“Fraud in procuring a trademark registration or renewal
occurs when an applicant knowingly makes false, material

its own translations of certain terms.
Opposition No. 91161570; Cancellation No. 92047126
13
representations of fact in connection with his application.”
In re Bose Corp., 91 USPQ2d 1938, 1939 (Fed. Cir. 2009),
quoting, Torres v. Cantine Torresella S.r.l., 808 F.2d 46,
48, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). A party seeking
cancellation of a trademark registration for fraudulent
procurement bears a heavy burden of proof. W.D. Byron &
Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1004, 153
USPQ2d 49, 750 (CCPA 1967). Indeed, “the very nature of the
charge of fraud requires that it be proven ‘to the hilt’
with clear and convincing evidence. There is no room for
speculation, inference or surmise and, obviously, any doubt
must be resolved against the charging party.” Smith Int’l,
Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981); see
also Asian and Western Classics B.V. v. Selkow, 92 USPQ2d
1478 (TTAB 2009).
There is “a material legal distinction between a
‘false’ representation and a ‘fraudulent’ one, the latter
involving an intent to deceive, whereas the former may be
occasioned by a misunderstanding, an inadvertence, a mere
negligent omission, or the like.” In re Bose Corp., 91
USPQ2d at 1940, quoting, Kemin Indus., Inc. v. Watkins
Prods., Inc., 192 USPQ 327, 329 (TTAB 1976). In other
words, deception must be willful to constitute fraud. In re
Bose Corp., 91 USPQ2d at 1940. Thus, a trademark

9 We address Odessky’s motion to add an abandonment claim infra.
Opposition No. 91161570; Cancellation No. 92047126
14
registration is obtained fraudulently only if the applicant
knowingly makes a false, material representation with the
intent to deceive the USPTO. In re Bose Corp., 91 UPSQ2d at
1941. In this regard, the Federal Circuit stated the
following:
Subjective intent to deceive, however difficult it
may be to prove, is an indispensable element in
the analysis. Of course, “because direct evidence
of deceptive intent is rarely available, such
intent can be inferred from indirect and
circumstantial evidence. But such evidence must
still be clear and convincing, and inferences
drawn from lesser evidence cannot satisfy the
deceptive intent requirement.” ... When drawing
an inference of intent, “the involved conduct,
viewed in light of all the evidence ... must
indicate sufficient culpability to require a
finding of intent to deceive.”

In re Bose Corp., 91 USPQ2d at 1941 (citations omitted).
It must be determined whether an applicant’s false
statements “represent ‘a conscious effort to obtain for his
business a registration to which he knew it was not
entitled.’” In re Bose Corp., 91 USPQ2d at 1942, quoting
Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d
336, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997). Unless the
challenger can point to evidence to support an inference of
deceptive intent, it has failed to satisfy the clear and
convincing evidence standard required to establish a fraud
claim. In re Bose Corp., 91 USPQ2d at 1942.
Odessky specifically pleads that Gruppa “when it filed
its application for SHUSTOV only had the intention to use
Opposition No. 91161570; Cancellation No. 92047126
15
the mark SHUSTOV on vodka.” Pet. ¶21. Further, Gruppa’s
statement that it intended to use the SHUSTOV mark on the
other recited goods “was a willful false statement and a
material misstatement of fact.” ¶23. In addition, “when it
amended [the identification of goods in] its application for
SHUSTOV, [Gruppa] only had the intention to use the mark
SHUSTOV on vodka [and such amendment] was a willful false
statement and a material misstatement of fact.” ¶¶25, 27.
Odessky also alleged that Gruppa’s “affirmative actions show
that [Gruppa] has and had an intention to use the mark
SHUSTOV only on vodka.” ¶30. Odessky alleges that the
subject registration “would not have issued for distilled
rice spirits, aperitif wines, alcoholic honey drink,
peppermint schnapps; alcoholic fruit-based beverages; sake;
gin; rum; liqueurs; whisky; or brandy had [Gruppa] not
fraudulently claimed that it intended to use the mark
SHUSTOV on said goods.” ¶31.
Odessky argues that, based on the evidence of record,
Gruppa has never manufactured or sold distilled rice
spirits, peppermint schnapps, sake, gin and rum anywhere in
the world, it is questionable if they manufacture or sell
wine, and they sell whisky under a different mark.
According to Odessky, Gruppa’s response to Interrogatory No.
6(a) that it adopted the SHUSTOV mark “to serve as a brand
name for its vodka in the United States” establishes that
Opposition No. 91161570; Cancellation No. 92047126
16
Gruppa did not have a bona fide intent to use the mark for
the remaining goods. Further, Odessky contends that
Gruppa’s asserted ability to manufacture a wide range of
alcoholic products supports a finding of fraud in that a
“sophisticated and knowledgeable producer of a well-defined
line of non-alcoholic and alcoholic beverages ... did not
mistakenly list goods on which it had no use or intent to
use – rather it did so deliberately and deceptively in order
to acquire a placeholder for the most expansive trademark
rights it felt it could get.” Od. Br. p. 19. Essentially,
Odessky argues that because the record does not contain
documents evidencing plans to market each of the listed
goods in the United States and that Gruppa has not
manufactured certain of the goods for sale anywhere in the
world (e.g., sake, rum and gin), this supports a finding of
deceptive intent.
Gruppa argues that “based on the evidence of record, a
reasonable factfinder could only find that [Gruppa] did have
such bona fide intent [and] ... even were such intent
absent, which it is not, [Odessky] has [not] established
anything close to the Bose subjective standard.” Gr. Reply
Br. p. 16. In particular, Gruppa argues that its ability to
produce and market all of the listed goods supports its
intent to use the mark. With regard to its response to
Interrogatory No. 6(a), Gruppa asserts that “one poorly
Opposition No. 91161570; Cancellation No. 92047126
17
worded response does not suffice to contradict all the other
testimony and evidence of record.” Gr. Reply Br. p. 20.
We begin by determining if the statement of bona fide
intention to use the mark on each of the goods except vodka
at the time Gruppa filed its application and subsequent
amendment was false. Although Gruppa’s application was
based on Section 44 of the Act, a bona fide intention to use
the mark on the identified goods is a requirement for such
an application, Imperial Tobacco Ltd. v. Philip Morris Inc.,
899 F.2d 1575, 14 USPQ2d 1390, 1392 n. 3 (Fed. Cir. 1990),
In re Unisearch Ltd., 21 USPQ2d 1559 (Comm’r Pats. 1991),
and therefore Section 1(b), the intent-to-use basis for an
application, and the case law interpreting that provision,
is instructive. Section 1(b) provides that “[a] person who
has a bona fide intention, under circumstances showing the
good faith of such person, to use a trademark in commerce
may request registration of its trademark on the principal
register...” Trademark Act Section 1(b)(1), 15 U.S.C.
§1051(b)(1). A bona fide intent is “a good faith intention
to eventually use the mark in a real and legitimate
commercial sense.” Lane Ltd. v. Jackson International
Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994), quoting, H.
Rep. No. 100-1028, 11th Cong.2d Sess. (1988).
The Board has held that “...the determination of
whether an applicant has a bona fide intention to use the
Opposition No. 91161570; Cancellation No. 92047126
18
mark in commerce is to be a fair, objective determination
based on all the circumstances.” Lane, 33 USPQ2d at 1355.
The Board also has stated that the requirement that an
applicant must have a bona fide intent to use the mark in
commerce “must be read in conjunction with the revised
definition of ‘use in commerce’ in Section 45 of the
Trademark Act, which the Trademark Law Revision Act of 1988
amended to require that such use be ‘in the ordinary course
of trade, and not made merely to reserve a right in a
mark.’” Commodore Electronics Ltd. v. CBM Kabushiki Kaisha,
26 USPQ2d 1503, 1507 (TTAB 1993). An “applicant’s mere
statement of subjective intention, without more, would be
insufficient to establish applicant’s bona fide intention to
use the mark in commerce.” Lane, 33 USPQ2d at 1355.
The absence of any documentary evidence on the part of
an applicant regarding such intent constitutes objective
proof sufficient to establish that the applicant lacks a
bona fide intention to use its mark in commerce. See
Spirits International N.V. v. S.S. Taris Zeytin Ve
Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d
1545 (TTAB 2011); Boston Red Sox Baseball Club LP v.
Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). As noted above,
Odessky contends that Gruppa “has failed to produce a single
document evidencing its claimed intention to use the SHUSTOV
mark in the United States” on any goods, other than vodka.
Opposition No. 91161570; Cancellation No. 92047126
19
Br. pp. 19-20. Odessky’s analysis of Gruppa’s evidence is
that it shows an absence of documentary evidence of Gruppa’s
intent to use the mark on goods other than vodka. Odessky
further relies on Gruppa’s response to Interrogatory No.
6(a) and Gruppa’s COLA’s for only vodka to support its
position.
Much of Gruppa’s evidence is in the testimony of
Nataliya Rybina and the accompanying exhibits. In 1999 or
2000, Ms. Rybina worked for a law firm and Gruppa was a
client. In 2004, she went to work for Gruppa as head of its
Department of Intellectual Property until 2008. Rybina
Test. pp. 10-11, 104.
Gruppa started producing alcoholic beverages in Russia
in 1995 and started producing alcoholic beverages for sale
in Russia under the SHUSTOV mark in Cyrillic lettering in
early 2000. Id. p. 13. Gruppa has a large capacity for
output, approximately 7 million decaliters of alcohol per
year. Id. at 14. Gruppa is the third largest manufacturer
of alcoholic beverages in Russia, Id. pp. 14, 96, and its
Cyrillic version of the SHUSTOV mark is sold in Russia in
connection with a variety of alcoholic beverages. Id. pp.
15-17. The brand is “well known” in Russia. Id. p. 15. In
Russia, Gruppa sells vodka, brandy, liqueurs, bitters,
Opposition No. 91161570; Cancellation No. 92047126
20
balsam,10 and low-alcohol content mixed drinks. Id. p. 22.
Gruppa exports vodka, cognac, liqueurs, sweet alcoholic
drinks and balsam. Id. p. 34. Gruppa has attempted to
manufacture rice distilled spirits and sake. Id. p. 76-77,
79. Gruppa worked with a Japanese company to develop
capacity to make distilled rice spirits. Id. p. 126. Under
the SHUSTOV mark Gruppa manufactures bitters, alcoholic
honey drink, aperitifs, liqueurs, drinks with rum or gin,
vodka and brandy. Gruppa manufactures whisky under a
different mark. Id. pp. 79-81. Gruppa produces
concentrate-based wine. Id. p. 36-37, 88-89. Gruppa
manufactures a peppermint flavored low-alcoholic drink. Id.
p. 138.
Ms. Rybina testified that Gruppa intended to use the
mark on all of the goods listed in the registration. Id. p.
81, 84-85. Specifically, she testified that “At the time
[Gruppa filed its application it] had an extensive
experience in producing a variety of alcoholic beverages,
and it was believed that this experience will be used for
marketing Shustov brand ... there was an understanding that
all the products of the company could be used for exports.”
Id. pp. 90-91. As part of her regular duties beginning in
2004 she attended many weekly meetings concerning exports,

10 Balsam is an alcoholic drink that incorporates honey. Rybina
Test. p. 32.

Opposition No. 91161570; Cancellation No. 92047126
21
including exports to the United States. Id. pp. 92, 189-
190. Certain efforts have been made to market their goods
in the United States, for example, attempts to develop
appropriate bottle sizes for the U.S. market. Id. p. 92.
Gruppa has developed bottles and packaging for alcoholic
products for sale internationally. Id. pp. 43-48, Exh. 6,
Bates Nos. 30-33 (“In Russia Shustov vodka is bottled in .5-
liter bottles. The distributors asked us to bottle it into
1-liter bottles for the United States, which is actually
quite difficult.” Id. p. 93). Gruppa sought distributors
for its SHUSTOV brand in the United States. Id. p. 140, see
also Od. NOR, Gruppa’s COLAs filed by its distributor in
2005 and 2006 for vodka. In 2004, they found a distributor
in the United States to sell SHUSTOV branded products. Id.
p. 140. Gruppa has an existing distribution network for
U.S. sales of alcoholic products under its other brand JEWEL
OF RUSSIA. Od. NOR, Rybina Test. p. 140. Gruppa has
created English language versions of its SHUSTOV labels for
vodka and balsam. Rybina Test. pp. 46-49, Exh. No. 6, Bates
nos. 31-33. Gruppa has used the SHUSTOV mark in its English
or Cyrillic version in Russia and Germany on many of the
listed goods. Id. pp. 42-44, 76-80. As to sales in the
United States, Ms. Rybina testified that it was “possible
that there were some trials but not full-scale sales” in
2007, but she did not “know for sure whether [there were
Opposition No. 91161570; Cancellation No. 92047126
22
sales] in the United States.” Id. p. 109. According to Ms.
Rybina, Gruppa has not marketed in the United States yet
because it is expensive and distributors will not deal with
them until they resolve the trademark dispute and they have
to accommodate new bottles. Id. pp. 97-98.
As to these referenced facts we find Ms. Rybina’s
testimony to be competent. During her time as outside
counsel, from 2000-2003, she filed the Russian application
upon which the subject Section 44 registration is based.
Id. p. 122. From 2004 until, at least, 2008 she has been
involved in Gruppa’s trademark matters. Odessky points to
her testimony that she was not directly involved in
marketing to the United States; however, as head of the
Department of Intellectual Property we find her competent to
testify about Gruppa’s activities and intentions with regard
to its SHUSTOV mark. Further she testified that she
received regular reports from the export department relating
to use abroad. Id. p. 35. As revealed on cross
examination, she testified that her responsibilities
regarding the SHUSTOV mark were “Filing an application,
correspondence with foreign attorneys related to acquiring
rights on the territories of those countries.” Id. p. 144.
While the documentary evidence does not include
specific written marketing plans for use of the mark on each
of the individual alcoholic beverages, there is documentary
Opposition No. 91161570; Cancellation No. 92047126
23
evidence that sufficiently supports and corroborates Ms.
Rybina’s testimony as to Gruppa’s intent to use the SHUSTOV
mark as to all of the listed goods. The documentary
evidence here consists primarily of documents showing
Gruppa’s use of the SHUSTOV mark (and its Cyrillic form) in
Russia and Germany.11 While the COLA’s filed in 2005 and
2006 support an intention to use the mark on vodka in the
United States, the intention to use the mark on vodka is not
in issue with respect to the fraud claim. However, when
viewed in the context of the Rybina testimony regarding the
breadth of product offerings in Russia and the scaled
approach to introducing products we do not, as Odessky would
have us do, draw an adverse inference from the COLA’s.
COLA’s only for vodka do not support an inference of no bona
fide intent to use the mark in commerce for the other goods
listed in the identification. See, e.g., Rybina Test. p. 22
(“Q. And when they first started using the Shustov brand
for alcoholic beverages, did they produce a wide variety of
alcoholic beverages at that time? A. Not immediately. It
gained momentum as time went by. But the experience of

11 As noted in the Board order of November 28, 2011, Gruppa’s
Section 8 affidavit filed in Registration No. 2885912 is of
record, however, the evidentiary value of this matter has
limitations and our determination does not rely on it. Trademark
Rule 2.122(b)(2).

Opposition No. 91161570; Cancellation No. 92047126
24
producing such beverages was held by the company even before
Shustov.”)
The evidence submitted establishes that Gruppa is
capable of manufacturing and exporting all of the listed
goods and already manufactures and to a limited extent
exports many of them under the SHUSTOV mark (in Cyrillic and
English lettering) in Russia, Germany and other countries.
In addition, Gruppa exports alcoholic products to the United
States under other marks, e.g., JEWEL OF RUSSIA. Moreover,
the COLA’s from 2005 and 2006 show efforts by Gruppa to
market its alcoholic beverages in the United States
beginning with vodka. Based on their scaled approach to
rolling out SHUSTOV branded products in Russia, where the
variety of products “gained momentum as time went by,” we
may infer Gruppa intended a similar approach as to its
export market.
This case is quite different from the facts presented
in Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1664 (TTAB
2009), where the individual applicant sought to register the
mark V.I.C. for “vehicles for transport” but provided no
evidence to demonstrate “that he manufactures vehicles in
Germany or elsewhere.” By contrast, the facts here are more
similar to those in Lane, 33 USPQ2d 1351, where the evidence
that the applicant “was engaged in the tobacco marketing
business” supported a bona fide intention to use the mark in
Opposition No. 91161570; Cancellation No. 92047126
25
commerce. This is not to say that “capability” alone is
necessarily sufficient; however, the existence of a
successful ongoing concern coupled with testimony and
documentary evidence regarding its efforts to export under
the subject mark and success in exporting other brands to
the United States under its other marks combine to create a
totality of circumstances that support a bona fide intention
to use. In short, the evidence points to “a good faith
intention to eventually use the mark in a real and
legitimate commercial sense” as to all of the goods listed
in the identification and does not reveal that the
application was made “merely to reserve a right in a mark.”
Lane, 33 USPQ2d at 1355; Commodore, 26 USPQ2d at 1507.
Odessky has the initial burden of demonstrating by a
preponderance of the evidence that Gruppa lacked, on the
filing date of the application and subsequent amendment to
the identification of goods, a bona fide intent to use the
mark on the identified goods. Spirits, 99 USPQ2d 1545. As
discussed above, we find that the record contains
documentary evidence indicating Gruppa’s bona fide intention
to use the mark in connection with the subject goods. To
the extent Odessky has satisfied its initial burden of
proving that Gruppa did not and does not have a bona fide
intention to use its applied-for mark on or in connection
with certain alcoholic beverages due to an absence of more
Opposition No. 91161570; Cancellation No. 92047126
26
specific marketing plans, such that the burden shifts to
Gruppa to come forward with evidence which would adequately
explain or outweigh the failure to provide such documentary
evidence, the Rybina testimony and accompanying exhibits
satisfy this burden.
Based on the evidence of record we find that Gruppa had
a bona fide intent to use the mark on each of the alcoholic
beverages at the time it filed its application and amendment
to the identification of goods, and, as such the statement
as to its intent was not false.
Further, assuming arguendo that the statement was
false, i.e., Gruppa did not have a bona fide intention to
use the SHUSTOV mark on the listed alcoholic beverages,
other than vodka, Odessky has not met its burden of proof to
establish that such false statement was done with an intent
to deceive. As to the intent element, there is no direct
evidence of intent and this record does not support an
inference of willful intent.
ABANDONMENT
On February 16, 2010, during its extended rebuttal
trial period, Odessky moved to add the claim of abandonment
and a decision on this amendment was deferred for final
disposition. We must decide two questions: whether Odessky
delayed too long to assert this claim, and whether the claim
of abandonment was tried by consent.
Opposition No. 91161570; Cancellation No. 92047126
27
Turning first to the question of delay, by way of
background, Gruppa opposed Odessky’s application on July 28,
2004, asserting ownership of application Serial No.
76519958. Thereafter, on September 21, 2004, Gruppa’s
asserted application issued into Registration No. 2885912.
Odessky petitioned to cancel this registration on February
22, 2007 on the ground of fraud. The Board, in an order
dated April 15, 2008, found that Odessky’s petition to
cancel was not subject to the compulsory counterclaim rule
under Trademark Rule 106(b)(2) because, although the
underlying application was pleaded in the opposition,
Gruppa, at that time, had not amended the opposition to
assert the newly issued registration. On December 18, 2008,
the Board granted Gruppa’s motion to amend its notice of
opposition to assert its issued Registration No. 2885912.
On February 12, 2009, Odessky filed an answer to the amended
complaint. Thus, as of December 18, 2008, any claim against
Gruppa’s asserted registration falls within the compulsory
counterclaim rule. Trademark Rule 2.106(b)(2)(i) provides
as follows:
A defense attacking the validity of any one or
more of the registrations pleaded in the
opposition shall be a compulsory counterclaim if
grounds for such counterclaim exist at the time
when the answer is filed. If grounds for a
counterclaim are known to the applicant when the
answer to the opposition is filed, the
counterclaim shall be pleaded with or as part of
the answer. If grounds for a counterclaim are
learned during the course of the opposition
Opposition No. 91161570; Cancellation No. 92047126
28
proceeding, the counterclaim shall be pleaded
promptly after the grounds therefor are learned.
A counterclaim need not be filed if it is the
subject of another proceeding between the same
parties or anyone in privity therewith.

Odessky argues that Gruppa’s testimonial deposition
taken on October 29, 2009 of Natalia Rybina revealed
“entirely new evidence” that Gruppa “has not only not used
the registered trademark SHUSTOV in connection with any of
the goods specified in the cancellation, but appears not to
have used the SHUSTOV mark on vodka for a substantial period
of time, and in fact may well have discontinued use of the
SHUSTOV mark in the United States for a period of 3 years or
more, after having made only limited test marketing sales.”
Od. Mot. p. 2 (February 16, 2010). Thus, Odessky’s position
is that its motion to amend is timely because it was made
sufficiently soon after learning of new facts through Ms.
Rybina’s deposition.
Odessky never acknowledged actual use of the mark by
Gruppa on vodka, only a bona fide intent to use. Under
Imperial Tobacco, 14 USPQ2d 1390, three years of nonuse
subsequent to the issuance of Gruppa’s Section 44-based
registration on September 21, 2004 would have constituted a
prima facie showing of abandonment, i.e., a showing of
nonuse from the registration date until September 21, 2007.
In fact, apparently Odessky itself had investigated Gruppa’s
use of SHUSTOV on vodka in April, 2009. In an untimely
Opposition No. 91161570; Cancellation No. 92047126
29
motion for summary judgment filed on April 3, 2009, Odessky
states “[Gruppa] has failed to make of record any evidence
that it is using [SHUSTOV] on any goods. In an online
search on the Internet database, [Odessky] found no use of
[the SHUSTOV] mark by [GRUPPA] on any goods ... [and
Gruppa] ... did not put in any evidence of actual use of the
registered trademark on any goods.” Id. pp. 7, 10 fn. 2.
Given Odessky’s statements in its April 3, 2009 motion, it
is simply not plausible that the Rybina testimony in October
2009 presented “entirely new evidence” as to Gruppa’s use of
the mark on vodka.
Based on these statements, it appears that Odessky had
sufficient knowledge to plead an abandonment claim at least
as early as April 3, 2009. Even assuming that Odessky did
not have sufficient information to bring the abandonment
claim on that date, and the information gleaned from the
Rybina testimony was “newly discovered” evidence, the Rybina
testimony was taken on October 29, 2009, and over three
months elapsed before Odessky filed its motion to add the
abandonment ground. Odessky’s argument that the testimony
transcript “was not certified until November 30, 2009” and
“after reviewing the contents” of the deposition it promptly
filed its motion to amend, on February 16, 2010, is not
persuasive. Odessky was present at the October 29, 2009
deposition and was aware of the “newly discovered” evidence
Opposition No. 91161570; Cancellation No. 92047126
30
at that time. Further, even if we were to accept that
Odessky was not aware of the contents of the testimony
deposition until November 30, 2009 (and we do not accept
this), Odessky still waited over two months from receiving
the transcript to file its motion. In short, under the
circumstances of this case, Odessky did not promptly file
its motion to amend to add a compulsory counterclaim.
Further, we find that the issue of abandonment was not
tried by implied consent under Fed. R. Civ. P. 15(b).
Implied consent to the trial of an unpleaded issue can be
found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered
in support of the issue. There must be no doubt that the
non-moving party was aware that the issue was being tried.
TBMP §507.03(b) (3d ed. 2011) and cases cited therein.
First, Odessky argues that “the issue of whether
[Gruppa] had a bona fide intent to use is intimately related
to the issue of use in commerce ... [and Gruppa] was well
aware that any evidence it adduced at trial which would
demonstrate its intention to use the SHUSTOV mark in
commerce, or explaining its non-use, would also have direct
bearing on the issue of ‘use’ in commerce ... [thus, Gruppa]
cannot claim it was ‘surprised’ by [Odessky’s] reliance on
[Gruppa’s] own testimony to prove that not only did [Gruppa]
Opposition No. 91161570; Cancellation No. 92047126
31
lack the requisite bona fide intention to use the SHUSTOV
mark in commerce, but its failure to make such use
constituted statutory abandonment of the SHUSTOV mark.” Od.
Br. pp. 28-29. Odessky asserts that the “entwinement of the
issues of intent, use and abandonment put [Gruppa] on fair
notice that such a pleading could be introduced if no
evidence of use of the mark on any product was made of
record.” Id.
In response, Gruppa argues that “the abandonment claim
is not based on the same transactional facts as those
implicated by the fraud claim. First, the abandonment claim
relates to all the goods listed in the application.
Gruppa’s intentions towards vodka, however, were never
previously in dispute. Second, the fraud claim related only
to Opposer’s intentions at the time the application was
filed in May 2003. The transactional facts relating to
abandonment all necessarily follow after the registration
issued.” Gr. Br. pp. 30-31.
In support of its position, Odessky relies on Paramount
Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994). That
case involved a motion for summary judgment where the
defendant did not object to opposer’s motion for summary
judgment as being based, in part, on an unpleaded issue, but
rather treated the issue on its merits. Id. at 1772.
Further, in that case, the notice of opposition included
Opposition No. 91161570; Cancellation No. 92047126
32
allegations that the applicant had not made bona fide
commercial use of his mark in commerce and the Board stated
that such allegations could be “construed to comprehend” the
“no use on goods in trade” ground. Id. Clearly, in this
case, the allegations of no bona fide intent to use the mark
on certain of the goods in the registration, and explicit
allegations that Gruppa had a bona fide intent to use the
mark on vodka, cannot be “construed to comprehend” a claim
of abandonment as to all of the goods, regardless of whether
evidence of use would serve to defend against a claim of no
bona fide intent to use.
Next, Odessky contends that Gruppa “opened the door” to
such a claim when Gruppa, on direct examination, posed the
question “Why has [Gruppa] not yet commenced full production
and export of the [SHUSTOV] products into the United
States?” Odessky continues by asserting that Gruppa’s
consent to trial on this claim is further supported by
Gruppa’s failure to object to Odessky’s questions on this
issue on cross examination. Id.
Based on the circumstances of this case, we find that
the claim of abandonment was not tried by implied consent.
The evidence allegedly bearing on the issue of abandonment
could be interpreted as going to the issue of bone fide
intent to use in the fraud claim. “Under such
circumstances, we cannot say that applicant was fairly
Opposition No. 91161570; Cancellation No. 92047126
33
apprised that the evidence was being introduced in support
of the unpleaded” abandonment claim. Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998). In view
thereof, Odessky’s motion to amend the pleading to assert a
claim of abandonment is denied.
We add that this record does not support a claim of
abandonment and amendment to add such a claim would, in any
event, be futile. Sunnen Products Co. v. Sunex
International Inc., 1 USPQ2d 1744, 1746 (TTAB 1987) (motion
filed after close of trial to amend to add defense under
Fed. R. Civ. 15(b) denied inasmuch as evidence in record
does not support defense). Any nonuse of Gruppa’s mark
pending the outcome of litigation to determine the right to
such use constitutes excusable nonuse sufficient to overcome
any inference of abandonment. Penthouse International, Ltd.
v. Dyn Electronics, Inc., 196 USPQ 251 (TTAB 1977). In view
of the defenses asserted in its January 11, 2005 answer to
Gruppa’s July 28, 2004 notice of opposition, challenging
Gruppa’s trademark rights in the SHUSTOV mark, the
subsequent petition to cancel, filed on February 22, 2007,
and the resulting cloud of uncertainty as to whether
Gruppa’s rights in the mark would survive the proceedings,
Gruppa was justified in postponing its use of the mark
pending the outcome of these proceedings.
Opposition No. 91161570; Cancellation No. 92047126
34
In view of the above, the petition to cancel is
dismissed.

NOTICE OF OPPOSITION/LIKELIHOOD OF CONFUSION
In view of our decision dismissing the petition to
cancel Gruppa’s registration, we proceed to consider
Gruppa’s opposition against Odessky’s application Serial No.
78240612 for the mark SHUSTOFF for “alcoholic beverages
except beers, namely aperitifs with a distilled alcoholic
liquor base; distilled liquors; distilled spirits; wines;
whisky; vodka; gin; prepared alcoholic cocktails; liqueurs;
distilled beverages; bitters, namely schnapps and liqueurs;
rum; liqueurs and spirits in the nature of digestives;
spirituous alcoholic extracts.” Odessky has not presented
argument against the merits of the opposition other than to
simply state that if the Board cancelled Gruppa’s
registration the opposition would be moot because Gruppa
relies solely on the registration to establish priority.
Standing/Priority
Because Gruppa has made its registration of record and
has shown that the registration is valid and subsisting and
owned by Gruppa, Gruppa has established its standing to
oppose Odessky’s application for the mark SHUSTOFF and
priority is not in issue. See Cunningham v. Laser Golf
Opposition No. 91161570; Cancellation No. 92047126
35
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).

Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Odessky has essentially conceded that there is a
likelihood of confusion between the parties’ marks as used
on their respective goods. We also find that the record
supports such a conclusion. As to the factor of the
relatedness of the goods, many of the goods listed in
Odessky’s application are identical to those listed in
Gruppa’s registration, including distilled spirits, bitters
and vodka. In view thereof, we find the goods to be
identical in part. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) (it is
sufficient for a determination of likelihood of confusion if
the relatedness is established for any item encompassed by
the identification of goods in the application). Further,
inasmuch as the identifications of goods are identical in
Opposition No. 91161570; Cancellation No. 92047126
36
part, we must presume, for purposes of the likelihood of
confusion analysis, that the trade channels and classes of
purchasers are identical. Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
We turn next to consider the marks. At the outset of
this consideration, it is noted that “when marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 32 USPQ2d 1698 (Fed.
Cir. 1992). We find the most prominent element of Gruppa’s
mark is the word SHUSTOV. The bell design is subordinate,
placed behind the wording, and, generally, wording dominates
over a design element inasmuch as potential consumers use
the word to call for the goods. In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). We also find
that Odessky’s mark SHUSTOFF is similar in sound and
appearance to SHUSTOV, the dominant element in Gruppa’s
mark. Based on the evidence of record we find that the
marks are highly similar in sound, appearance, connotation
and overall commercial impression.
In view of the above, we conclude that because the
marks are similar, the goods identical and there is a
presumed overlap in the channels of trade and classes of
purchasers, there is a likelihood of confusion. In view
Opposition No. 91161570; Cancellation No. 92047126
37
thereof, and because Gruppa’s priority is not in issue,
Gruppa has proven its claim under Section 2(d) of the
Trademark Act.
Decision: The petition to cancel is dismissed and the
opposition is sustained and registration to Odessky is
refused.