Cabelas.com, Inc.v.Dakota Industries, Inc.

Trademark Trial and Appeal Board

Sep 26, 2008

No. 92047600 (T.T.A.B. Sep. 26, 2008)

Brown
Mailed: September 26, 2008

Cancellation No. 92047600
Cabelas.com, Inc.
v.
Dakota Industries, Inc.

Before Hohein, Rogers and Cataldo, Administrative Trademark
Judges.

By the Board:

This case now comes before the Board for consideration
of petitioner’s motion for summary judgment. The motion is
fully briefed.
By way of background, petitioner seeks cancellation of
Registration No. 0941497 for the mark DAKOTA for
“snowmobile suits, jackets, coats, coveralls, ski pants and
jackets, jumpsuits and jackets” in International Class 25.1
That registration issued from an application filed on
September 15, 1970, alleging August 8, 1969 as the date of
first use anywhere and August 29, 1969 as the date of first
use in commerce. In its petition to cancel (see petition
to cancel at paragraph #5), as well as in its now pending

1 The registration issued on August 22, 1972; second renewal.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92047600
2
motion for summary judgment, petitioner has asserted that
respondent has abandoned the mark due to at least three
consecutive years of nonuse and as a result, is no longer
entitled to maintain its registration of the DAKOTA mark.
Respondent has denied the salient allegations
contained in the petition to cancel and has asserted the
affirmative defenses of bad faith and unclean hands in its
answer.
In its referenced motion for summary judgment,
petitioner seeks judgment not only on its allegation of
abandonment but also on an unpleaded allegation that
respondent has committed fraud by claiming continued use of
the mark when its Section 8 and 15 affidavits were filed in
2002 for the involved registration, despite the fact that
respondent was no longer using the mark at that time. For
the following reasons, we grant petitioner’s motion for
summary judgment, but only on the ground of abandonment.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Cancellation No. 92047600
3
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The
nonmoving party must be given the benefit of all reasonable
doubt as to whether genuine issues of material fact exist,
and the evidentiary record on summary judgment, and all
inferences to be drawn from the undisputed facts, must be
viewed in the light most favorable to the nonmoving party.
See Opryland USA, Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
As a preliminary matter, standing is a threshold issue
that must be proven by a plaintiff in every inter partes
case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). The purpose of the standing requirement, which is
directed solely to the interest of the plaintiff, is to
prevent litigation when there is no real interest or
controversy between the parties. Lipton Industries, Inc.,
213 USPQ at 189. For a petition to cancel, the standing
requirement of a plaintiff has its statutory basis in
Section 14 of the Trademark Act which provides that “any
person who believes he is or will be damaged … by the
registration of a mark on the principal register …” may
file a petition to cancel. To establish standing, it must
be shown that the plaintiff has a “real interest” in the
Cancellation No. 92047600
4
outcome of the proceeding; that is, plaintiff must have a
direct and personal stake in the outcome of the
cancellation case. Ritchie, 50 USPQ2d at 1023. Insofar as
standing is concerned in this case, the record establishes
that there is no genuine issue of fact that petitioner is
not an intermeddler, and has standing to bring this
cancellation proceeding.
Here, petitioner alleges in its complaint that it
“makes reference to the designation DAKOTA online at its
cabelas.com website…” (paragraph # 1) and that registrant
has asserted that such use “constitutes infringement”
(paragraph # 6). While respondent denied those allegations
in its answer, it stated in paragraph #9 of that answer
that “[p]etitioner was served with a Summons and Complaint
for violation of trademark on January 18, 2007 and has
asserted the defense of abandonment and is currently in on-
going litigation.” On page two of its brief in response to
petitioner’s motion for summary judgment, respondent
further states that petitioner “has been in litigation
alleging the same arguments of [a]bandonment” in a “[c]ourt
of competent jurisdiction…” As respondent has
affirmatively stated the existence of a civil action
between the parties, petitioner has demonstrated a
legitimate personal interest as well as a reasonable basis
Cancellation No. 92047600
5
for its belief that it will be damaged by the continued
existence of the involved registration.
With regard to the ground of abandonment, Trademark
Act Section 45, 15 U.S.C. Section 1127, states in pertinent
part that “[a] mark shall be deemed ‘abandoned’… [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 3 consecutive years shall be
prima facie evidence of abandonment.” Also, merely because
a party used a mark a long time ago and it could use the
mark in the future is not enough to avoid abandonment. See
Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d 1778, 1783 (2d
Cir. 1989). Upon consideration of the record before us
petitioner has satisfied its burden in order to obtain
summary judgment on the issue of abandonment.
First, in the pending state court action, respondent’s
Chief Executive and President, Mr. Donald B. Mackintosh
(hereinafter “Mr. Mackintosh”), was called for a discovery
deposition. By rule, only trial testimony from another
proceeding between the parties or their privies may be
used, on motion granted by the Board, as evidence in
connection with a motion for summary judgment, or as
evidence at trial. See Trademark Rule 2.122(f). While
petitioner did not submit a formal motion to use Mr.
Cancellation No. 92047600
6
Mackintosh’s discovery deposition as part of its motion for
summary judgment, we note that respondent did not object to
its introduction and that respondent has even cited some of
Mr. Mackintosh’s statements in that deposition as a basis
to deny the motion for summary judgment. Since the parties
have discussed Mr. Mackintosh’s discovery deposition at
length without objection, the Board finds that the parties
have stipulated to its consideration.

In that regard, respondent admitted via Mr.
Mackintosh’s deposition that it has neither made nor sold
any goods identified in the involved registration since
1997 under the DAKOTA mark. Likewise, on page 9 of its
response to the motion for summary, respondent stipulated
to the following statements of “uncontested material
facts,” characterizing those statements as “correct and
uncontested”:
• The registrant has stipulated that it has not
made or sold any goods in the registration
bearing the DAKOTA mark since 1997. (Emphasis
added).

• The registrant has stipulated that it has not
licensed or collected any royalties related to
the licensing of DAKOTA since 2001. (Emphasis
added).

By virtue of these admissions and stipulations,
petitioner has put forth a prima facie showing of
Cancellation No. 92047600
7
abandonment in that it is clear that there has been a
period of at least three consecutive years of nonuse of the
mark DAKOTA for the goods identified in the registration
prior to the filing of the petition to cancel. Given this
showing, the burden shifts to respondent both as to the
motion for summary judgment and as to the abandonment
ground on which summary judgment is sought. Specifically,
respondent must counter the prima facie showing by
petitioner and establish that there is at least a genuine
issue for trial, by showing either evidence to disprove or
cast doubt on the underlying facts triggering the
presumption of abandonment from three years nonuse, or
evidence of an intent to resume use to disprove or cast
doubt on the presumed fact of no intent to resume use. See
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390, 1393 (Fed. Cir. 1990). In an effort to
rebut the showing that it had not used or licensed the
DAKOTA mark in the three year period prior to the filing of
the petition to cancel, respondent argues that there is
still a genuine of issue of material fact since it “has
licensees that continue to sell” as well as “use the word
mark DAKOTA” and that for tax purposes, royalty payments
from some of its licensees were “put through” another
Cancellation No. 92047600
8
entity instead of the listed owner of the registration,
“Dakota Industries, Inc.”
It is well-settled that licensing activity may
indicate that a trademark owner has not abandoned its mark
because it intends to resume use. See Sands, Taylor & Wood
Co. v. The Quaker Oats Co., 978 F.2d 947, 24 USPQ2d 1001,
1009 (7th Cir. 1992). Nonetheless, as the nonmoving party
on a motion for summary judgment, respondent may not rest
on its mere denials or conclusory assertions, and instead,
must put forth countering evidence showing that there is a
genuine factual dispute for trial. Thus, by itself, mere
express disagreement with the facts shown by the nonmoving
party is insufficient to meet that burden. See Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990).
In this case, respondent has not put forth any
evidence to show that there is a genuine issue on the
question of abandonment for trial. In fact, in response to
petitioner’s document production requests as well as the
motion for summary judgment, respondent has failed to offer
any document, such as a copy of a single licensing
agreement or at least one affidavit from an individual
knowledgeable of a specific licensing agreement, to support
Cancellation No. 92047600
9
the existence of any written or oral licensing arrangements
with any of its purported licensees.
Moreover, the documents that respondent has produced
during discovery in this case, including Federal Income Tax
Returns from 2001-2006, fail to establish that registrant
has derived any revenue from the sale of any of the goods
contained in its registration or through the collection of
any royalties for the licensing of its DAKOTA mark since
2001. Furthermore, according to Mr. Mackintosh, the
alleged “oral licenses not requiring the payment of
royalties” and the sale of certain items listed in the
registration under the DAKOTA mark for “the payment of only
$1.00,” all occurred before 2000. Thus, regarding any
licensing arrangements or sales by other third parties of
respondent’s goods, respondent is left solely to rely upon
the deposition of Mr. Mackintosh to withstand the prima
facie case made by petitioner on the motion for summary
judgment. As discussed below, however, respondent cannot
carry its burden as Mr. Mackintosh’s uncorroborated account
of certain issues in his deposition is plagued by
significant doubt as well as uncertainty.
For example, with respect to the identities of the
licensees it used after 2001, Mr. Mackintosh was unable to
identify any licensees. Indeed, when asked to identify
Cancellation No. 92047600
10
those entities licensed by respondent under the DAKOTA mark
since 2001, Mr. Mackintosh stated that they were “not
[known] at this time.” Further, when asked about any
actual royalty payments respondent received from its
licensees since 2001 and who monitored their receipt for
respondent, Mr. Mackintosh testified in lines 22-25 on page
sixty (60) and lines 1-2 on page sixty-one (61) of the
deposition as follows:
Q: Is there anyone – is there anyone that keeps track
of whether persons that have been licensed continue to
either use the mark or even continue to exist? Is
there someone responsible for that?
A: I would be responsible. I am not going to waste
any time or efforts on it.
In addition, Mr. Mackintosh stated that he was unsure
whether some of his purported licensees were even in
existence after 2001 and when asked about royalty payments
from California Studio Design, he testified in lines 13-23
on page 82 (eighty-two) as follows:
Q: Can you explain why it is that you have not
received any royalty payments from California Studio
Design?
A: Because he made lump sum payments stretched over a
year.
Cancellation No. 92047600
11
Q: And when was that, sometime before 2001; is that
right?
A: Yes. And that never went through the books -— the
tax books of Dakota Industries.
Q: Okay. Whose books did it go through?
A: It went through some debtors.
Similarly, while Mr. Mackintosh testified that on
behalf of respondent he has “recently viewed garments
bearing DAKOTA for sale by Jake Freddie in Sioux Falls,
South Dakota,” he also testified that those goods were
“manufactured eons ago.” From the record, there is no
evidence that Jake Freddie, identified as a “liquidator” in
South Dakota, ever had a licensing agreement with
respondent or is still in business. Indeed, respondent,
who is also located in South Dakota, never identified Jake
Freddie as one of its licensees in its written answers to
petitioner’s document production requests nor in the
deposition of Mr. Mackintosh.
Moreover, as petitioner also points out, even if we
could presume from Mr. Mackintosh’s deposition that there
could have been use of the DAKOTA mark on some of the goods
listed in the registration in the United States, there is
little, if any, actual information about the nature or
number of items bearing the mark that have been made or
Cancellation No. 92047600
12
sold since 2001. Thus, we have no basis to assume that,
even if there was actual use, it was anything more than
token use or sales. See Westrex Corp. v. New Sensor Corp.,
83 USPQ2d 1215, 1219 (TTAB 2007) (“[A] mere token sale or
shipment of the goods does not constitute ‘use’ under the
Trademark Act”). In view of the foregoing, we find that
petitioner has met its burden of demonstrating that there
are no genuine issues of material fact with respect to
respondent’s abandonment of the mark which is the subject
of Registration No. 0941497 and that petitioner is
accordingly entitled to judgment in its favor as a matter
of law on such ground. See Fed.R.Civ.P. 56(c) and (e).
Lastly, petitioner has also sought to obtain summary
judgment on the ground of fraud, yet the record is clear
that fraud was neither pleaded in the petition to cancel
nor raised in this case until the instant motion for
summary judgment was filed. Since a party may not obtain
summary judgment on an issue that has not been pleaded, the
Board will not consider petitioner’s fraud claim. See S.
Industries Inc. v. Lamb-Weston, Inc., 45 USPQ2d 1293, 1297
9TTAB 1997); Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ22d 1503, 1505 (TTAB 1993).
Nevertheless, petitioner’s motion for summary judgment
is hereby granted on the basis of abandonment, the petition
Cancellation No. 92047600
13
to cancel is granted and Registration No. 0941497 will be
cancelled in due course.