Alexandra Selectionv.Bonton

Trademark Trial and Appeal Board

May 7, 2008

No. 92044108 (T.T.A.B. May. 7, 2008)

Mailed: 5/7/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Alexandra Selection
v.
Bonton
_____

Cancellation No. 92044108
_____

William H. Holt, Esq. for Alexandra Selection.

Simor L. Moskowitz and Matthew J. Cuccias of Jacobson Holman
for Bonton.
_____

Before Quinn, Hairston and Holtzman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Alexandra Selection has petitioned to cancel a
registration owned by Bonton of the mark BONBON for
“jackets, pants, trousers, shirts, skirts, pullovers,
dresses, beachwear, swimwear, shorts and jeans.”1
As grounds for cancellation petitioner alleges that the
registered mark has been abandoned due to nonuse.
Respondent, in its answer, denied the allegations of
the petition to cancel.

1 Registration No. 1411389, issued September 30, 1986; renewed.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92044108
2
The record consists of the pleadings; the file of the
involved registration; an official record (Ex. P-1), and
respondent’s responses to certain interrogatories (Ex. P-3)
and requests for admissions (Ex. P-4) introduced by way of
petitioner’s notice of reliance.2 Respondent neither took
testimony nor offered any other evidence. Each party filed
a main brief.
Section 14 of the Trademark Act, 15 U.S.C. §1064,
allows for a petition to cancel a registration of a mark by
any person “who believes that he is or will be damaged...by
the registration of a mark.” The party seeking to cancel
the registration must prove two elements: (1) that it has
standing, and (2) that there is a valid ground to cancel the
registration. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
The standing question is an initial and basic inquiry
made by the Board in every inter partes case. That is,
standing is a threshold inquiry. Standing is an essential
element of a petitioner’s case which, if not proved at
trial, defeats a petitioner’s claim. See Ritchie v.
Simpson, 170 F.3d 1902, 50 USPQ2d 1023 (Fed. Cir. 1999); and

2 The Board, in an order dated September 29, 2006, struck certain
documents on which petitioner attempted to rely in its notice of
reliance, namely a declaration (Ex. P-2), and respondent’s
responses and objections to production requests (Ex. P-5). We
hasten to add that, even if these exhibits were of record, they
are irrelevant to petitioner’s standing in this case; rather,
they relate solely to the claim of abandonment.
Cancellation No. 92044108
3
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982). Petitioner has failed to
prove its standing in this case to be heard on its
abandonment claim.
In the present case, the petition to cancel includes a
proper allegation of petitioner’s standing. More
specifically, unnumbered paragraph 3 contains allegations
relating to an application owned by petitioner wherein
registration has been refused on the basis of the
registration sought to be canceled. The problem is that
petitioner did not introduce the relevant application papers
in this regard.3
Further, respondent did not make any admissions in its
answer that would excuse petitioner from having to prove, as
an element of its case in chief, its standing to be heard in
this proceeding. Allegations alone do not establish
standing.
Petitioner failed, at trial, to take any testimony or
introduce any other evidence to prove its standing to bring
this cancellation proceeding. Exhibit P-1 (a French
trademark assignment) relates exclusively to respondent’s
mark. Exhibits P-3 (responses to certain interrogatories)

3 The Board does not take judicial notice of files of
applications and/or registrations, where no copies thereof are
filed, and where they are not the subject of the proceeding.
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290
(TTAB 1986).
Cancellation No. 92044108
4
and P-4 (responses to certain requests for admissions)
relate to the use and/or nonuse of respondent’s registered
mark and, thus, relate to the pleaded claim of abandonment,
and not to petitioner’s standing.
In sum, the record is devoid of any probative evidence
to establish that petitioner is more than a mere
intermeddler. Accordingly, we find that petitioner has
failed to prove its standing.
Because petitioner has not proved its standing, the
petition to cancel must be denied.4 In view thereof, we
elect not to consider the merits of the pleaded ground. See
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036 (TTAB 1989), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed.
Cir. 1990); and American Forests v. Sanders, 54 USPQ2d 1860,
1864 (TTAB 2000).
Decision: The petition to cancel is denied for
petitioner’s failure to prove its standing.

4 Statements made in a party’s brief on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. Thus, the lone sentence in petitioner’s
brief relating to petitioner’s standing, namely that its
application was refused on the basis of respondent’s
registration, remains unproven.