Christian M. Ziebarthv.Del Taco, LLC

Trademark Trial and Appeal Board

Mar 31, 2015

No. 92053501 (T.T.A.B. Mar. 31, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Christian M. Ziebarth
v.
Del Taco, LLC
_____

Cancellation No. 92053501
against Registration No. 1043729
_____

Kelly K. Pfeiffer of Amezcua-Moll Associates PC
for Christian M. Ziebarth.

April L. Besl and Joshua A. Lorentz of Dinsmore Shohl LLP
for Del Taco, LLC.
_____

Before Mermelstein, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On December 20, 2010, Christian M. Ziebarth (“Petitioner”) filed a petition to
cancel Del Taco’s (“Respondent” or “Del Taco”) registration on the Principal Register
for the mark NAUGLES, in typed format,1 for “restaurant services” in

1 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. Trademark
Manual of Examining Procedure (“TMEP”) § 807.03(i) (January 2015).
Cancellation No. 92053501
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International Class 35.2 As set forth in the petition to cancel, Petitioner asserts a
claim of abandonment alleging, in relevant part:
4. Upon information and belief, Respondent has abandoned the
NAUGLES mark shown in Respondent’s Registration pursuant
to Section 14(3), 15 U.S.C. § 1064(3).

5. Upon information and belief, Respondent is not currently using
the NAUGLES mark as shown in Respondent’s Registration in
connection with “restaurant services.”

6. Upon information and belief, Respondent discontinued use of the
NAUGLES mark as shown in Respondent’s Registration in
connection with “restaurant services” many years ago.

7. Upon information and belief, for at least the last three
consecutive years, Respondent has not used the NAUGLES
mark as shown in Respondent’s Registration in connection with
“restaurant services,” thereby constituting prima facie evidence
of abandonment of the NAUGLES mark as shown in
Respondent’s Registration.

8. Although Respondent filed Sections 8 & 9 Affidavits to renew
Respondent’s Registration on May 18, 2006 (“2006 Renewal”),
upon information and belief, Respondent had, at the time of the
2006 Renewal, previously discontinued and abandoned use of
the NAUGLES mark as shown in Respondent’s Registration in
connection with “restaurant services.” The specimen submitted
to support such renewal was a website printout that does not
demonstrate bona fide use of the NAUGLES mark in connection
with “restaurant services.” The website merely discusses the
prior history of the Naugles restaurants and nothing more. (See
Exhibit 1).3 In addition, upon information and belief, “restaurant
services” were not being provided by Respondent under the
NAUGLES mark as shown in Respondent’s registration at the
time of the 2006 Renewal.

2 Registration No. 1043729, issued July 13, 1976, alleging December 13, 1970 as the date of
first use anywhere and in commerce; Sections 8 and 15 affidavits accepted and
acknowledged; renewed on July 13, 2006.
3 With the exception of a petitioner’s pleaded registration, materials submitted with a
petition to cancel are not of record unless properly introduced at trial. See Trademark Rule
2.122(d); 37 C.F.R. § 122(d).
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9. In addition, although Respondent filed sections 8 & 9 Affidavits
to renew Respondent’s Registration on July 8, 1996 (“1996
Renewal”), upon information and belief, Respondent had at the
time of the 1996 Renewal, previously discontinued and
abandoned use of the NAUGLES mark as shown in
Respondent’s Registration in connection with “restaurant
services.” In addition, upon information and belief, “restaurant
services” were not being provided by Respondent under the
NAUGLES mark as shown in Respondent’s Registration at the
time of the 1996 Renewal.

Respondent, in its answer to the petition to cancel, denied the salient allegations
therein.4
The case is now fully briefed.
I. The Record5
The parties are commended for stipulating to the option of submitting witness
testimony in affidavit form, with the proviso that the non-submitting party reserves
the right to conduct live cross-examination of the affiant while the submitting party
reserves the right to conduct live redirect examination.6 See “Parties Stipulation to

4 Respondent also asserted the affirmative defense of failure to state a claim upon which
relief may be granted in its pleading. Insofar as Respondent neither filed a formal motion to
dismiss pursuant to Fed R. Civ. P. 12(b)(6) during the interlocutory phase of this
proceeding, nor argued this asserted affirmative defense in its brief, it is hereby deemed
waived. See Alcatraz Media v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6
(TTAB 2013), aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014) (mem.).
5 Portions of the record have been designated confidential and have been treated as such.
All citations to the record refer to the redacted, publicly available versions of each
submission.
6 With the exception of the provisions regarding motions in limine which are prohibited
under Board practice, the parties’ stipulation (filed October 4, 2013) which also includes,
among other items, provisions regarding the right to make objections, is approved. See
Trademark Trial and Appeal Board Manual (“TBMP”) § 527.01(f) (2014).
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Submit Testimony in Affidavit Form” filed October 4, 2013; 56 TTABVUE.7 See also
Trademark Trial and Appeal Board Manual (“TBMP”) § 702.04(e) (“Utilizing
Stipulations in Non-ACR Board cases”) (2014).
Pursuant to Trademark Rule 2.122, the record includes the file of Respondent's
involved registration and the pleadings. The parties also submitted the following
evidence:
A. Petitioner’s Evidence
Petitioner submitted a Notice of Reliance (filed September 20, 2013) consisting of
the following items:
● Petitioner’s First Set of Interrogatories and certain responses thereto;

● Petitioner’s First Set of Requests for Admissions and certain responses
thereto;8 and

● Article entitled “Adios to Naugles; Fast Food Chain to switch to Del Taco”
from the Orange County Register dated May 17, 1989.

Petitioner also submitted the following:9

7 TTABVUE refers to the Board’s publicly available online docket system. For the citations
to the record in TTABVUE throughout the decision, the number preceding “TTABVUE”
corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the
page number(s) of that particular docket entry.
8 Denials of requests for admission are inadmissible under notice of reliance. Trademark
Rule 2.120(j)(3)(i). “[U]nlike an admission (or a failure to respond which constitutes an
admission), the denial of a request for admission establishes neither the truth nor the
falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P.
36(b).” See e.g., Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB
2008) (denials to requests for admission inadmissible).
9 In an interlocutory order dated August 12, 2013 (49 TTABVUE), the Board applied the
estoppel sanction to preclude Petitioner from submitting the testimony of Mr. William
Odell, who was first identified in Petitioner’s pretrial disclosures. See Fed. R. Civ. P.
37(c)(1) and Trademark Rule 2.116(a). See e.g., Great Seats, Inc. v. Great Seats, Ltd., 100
USPQ2d 1323, 1326-27 (TTAB 2011) and TBMP § 527.01(e) (2014) (“Estoppel Sanction”).
Cancellation No. 92053501
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● Affidavit of Petitioner Christian M. Ziebarth, with Exhibits A-Q attached
thereto (“Ziebarth Affidavit”);

● Affidavit of Rob Hallstrom, a third-party witness, with Exhibit H attached
thereto (“Hallstrom Affidavit”);

● Affidavit of Daniel Dvorak, a third-party witness (“Dvorak Affidavit”); and

● Cross-Examination Testimony Deposition of Noah Chillingworth
(“Chillingworth Cross-Examination Testimony”).

B. Respondent’s Evidence

Respondent submitted a notice of reliance (filed January 15, 2014) consisting of
the following:
● Respondent’s uninvolved Registration No. 4261951, issued December 18,
2012 based on an application filed March 30, 2011 for the mark NAUGLES
in standard character format for “[c]lothing, namely, shirts, t-shirts, hats,
and jackets” in International Class 25, alleging September 15, 2011 as the
date of first use anywhere and in commerce;

● Petitioner’s First Response to Respondent’s First Set of Interrogatories and
Requests for Production of Documents and Things and Supplemental
Responses thereto; and

● Petitioner’s First Response to Respondent’s First Set of Requests for
Admission and Supplemental Responses Thereto.10

Respondent also introduced the following:
● Affidavit of Noah Chillingworth, Respondent’s Vice President of Marketing,
with exhibits attached thereto (“Chillingworth Affidavit”);

● Cross-Examination Testimony Deposition of Petitioner Christian M. Ziebarth
(“Ziebarth Cross-Examination Testimony”);

● Cross-Examination Testimony Deposition of Rob Hallstrom (“Hallstrom
Cross-Examination Testimony”); and

10 See note 9.

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● Cross-Examination Testimony Deposition of Daniel Dvorak (“Dvorak Cross-
Examination Testimony”).

II. Evidentiary Issues

Before turning to the substantive claims before us, we address various
evidentiary issues and motions. At the outset we observe that the discovery phase of
this case was contentious, and that discovery disputes continued to be an issue at
trial, notwithstanding the parties’ decision to stipulate to trial efficiencies. We
further note that the trial record in this case is voluminous, and both parties have
interposed numerous evidentiary objections. To the extent, if any, an objection has
not been specifically addressed below, we have considered the objected-to evidence,
keeping in mind the objections, and have accorded it whatever probative value it
merits.11

11 Respondent’s motion (filed October 13, 2014, 95 TTABVUE) to strike the declaration and
exhibits of Petitioner’s legal counsel Kelly K. Pfeiffer (“Pfeiffer Declaration”) submitted with
Petitioner’s reply brief is granted to the extent, if any, that Petitioner relies on the
declaration and exhibit in support of his case-in-chief (either to establish his standing to
bring the present suit or prove his claim of abandonment). Respondent’s alternative motion
pursuant to Trademark Rule 2.120(g) for discovery sanctions in the form of judgment is
denied as untimely. The events in question occurred in November of 2013, and had
Respondent believed that Petitioner’s conduct warranted the ultimate sanction of
judgment, Respondent should not have delayed filing a motion until final briefing of the
case.
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A. Petitioner’s Objections12 to Noah Chillingworth’s Testimony
Concerning Events Prior to February 2009
Petitioner objects to and has moved to strike certain testimony of Respondent’s
sole witness, Noah Chillingworth, Vice President of Marketing, as well as any
attendant exhibits, regarding “all events and actions taken by Del Taco prior to
February 2009” on the ground that Mr. Chillingworth lacks personal knowledge of
Respondent’s business prior to that date. Mr. Chillingworth testified that he
commenced working for Respondent in February 2009, and that prior to that date
he worked for a competitor, Taco Bell, from 2004-2009. Chillingworth Cross-
Examination Testimony 8:24-11:5; 85 TTABVUE 12-15. His affidavit states that
“[T]he NAUGLES brand has been owned and used by Del Taco and its predecessors
since 1988 in connection with Del Taco’s restaurant services.” Chillingworth
Affidavit ¶ 2; 78 TTABVUE 2. However, Mr. Chillingworth’s cross-examination
testimony makes clear that his knowledge of relevant events prior to February 2009
is based largely on his conversations with Respondent’s legal counsel and others he
was unable to name. Chillingworth Cross-Examination Testimony 40:7-43:22, 85

12 Respondent contends that because Petitioner improperly filed his evidentiary objections
in the form of a motion to strike appended to his main trial brief, and not within
Petitioner’s main trial brief, the objections are waived. Substantive objections to trial
testimony, whether taken live or in affidavit form, may be maintained in a party’s main
brief on the case, as an appendix to its brief on the case or in a separate statement of
objections filed with its brief on the case. Trademark Rule 2.128(b) (“[E]videntiary
objections that may properly be raised in a party’s brief on the case may instead be raised
in an appendix or by way of a separate statement of objections. The appendix or separate
statement is not included within the page limit.”). See Anthony’s Pizza & Pasta
International, Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1273 n.4 (TTAB 2009)
(objection to testimony raised in deposition may be maintained in appendix to brief or by
separate statement of objections), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010). See also,
Alcatraz Media, 107 USPQ2d at 1753. Accordingly, Petitioner’s separate “motion to strike”
does not result in waiver of the objections.
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TTABVUE 44-7 Mr. Chillingworth testified that “I know through conversations
with fellow employees as well through – with my legal counsel that I am informed
and believe.” Id. at 42:12-15, 85 TTABVUE 46.
Federal Rule of Evidence 60213 provides that “[a] witness may not testify to
matter unless evidence is introduced sufficient to support a finding that the witness
has personal knowledge of the matter.” General references to conversations with
others do not constitute the proper foundation to establish personal knowledge. See
City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d
1668, 1674-75 (TTAB 2013) (testimony of in-house legal counsel regarding events
that pre-existed his employment with defendant not considered). Mr.
Chillingworth’s testimony is based upon his general recollection of conversations
that took place with various unidentified individuals during the course of his
employment with Respondent since 2009, and with Respondent’s counsel, and as
such the testimony is not based on Mr. Chillingworth’s personal knowledge.
However, the Board does not ordinarily strike testimony taken in accordance
with the applicable rules on the basis of substantive objections; rather, such
objections are considered in evaluating the probative value (if any) of the testimony.
See Krause v. Krause Publications Inc., 76 USPQ2d 1904, 1907 (TTAB 2005). See
also, Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB
1992). In accordance with this practice, we have not stricken any of Mr.
Chillingworth’s testimony about events prior to February 2009, but we have

13 Trademark Rule 2.122(a) provides that the Federal Rules of Evidence apply to Board
inter partes proceedings.
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accorded his testimony the appropriate probative weight in light of the above. to the
extent it is inadmissible. See Coach Services Inc. v. Triumph Learning LLC, 96
USPQ2d 1600, 1603 (TTAB 2010), aff'd in relevant part, 668 F.3d 1356, 1010
USPQ2d 1713, 1730 (Fed. Cir. 2012) (sustaining objection to testimony about
business matters prior to the witness’ employment and for which she did not
otherwise have personal knowledge).
B. Petitioner’s Objection to Exhibit 11 (menu) to the Chillingworth
Affidavit

Petitioner moved to strike Exhibit 11 to the Chillingworth Affidavit which
consists of a menu displaying the phrase “Viva Naugles Viva Del Taco,” on the
ground that Mr. Chillingworth lacks personal knowledge of the exhibit, cannot
authenticate it and is unable to lay the proper foundation for its introduction into
the record. In his testimony, Mr. Chillingworth described the menu as “an example
of advertising previously used by Del Taco in connection with its restaurant services
prominently featuring the NAUGLES mark.” Chillingworth Affidavit ¶ 3; 78
TTABVUE 2. However, upon cross-examination, he testified that since he began
working for Del Taco in February 2009, he had not seen the menu actually used in
marketing Respondent’s restaurant services. Chillingworth Cross-Examination
Testimony 60:11-14; 85 TTABVUE 64. In addition, he was unable to indicate when
Del Taco used the menu, testifying only that he believed it was used in marketing
Respondent’s NAUGLES-branded restaurant services because it was kept in Del
Taco’s archives. Id. at 57:19-25; 59:1-3; 85 TTABVUE 61, 63.
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Petitioner’s motion to strike is overruled, see Fed. R. Evid. 803(6) (business
record exception to the hearsay rule), but we are unable to give this evidence any
significant probative value because of Mr. Chillingworth’s inability to provide exact,
or even approximate dates of use, as well as his admission that since being
employed with Del Taco, he has not personally observed the menu in actual use.
C. Petitioner’s Objection to Exhibit 29 (Photographs of Clothing Articles)
to the Chillingworth Affidavit

Mr. Chillingworth introduced as Exhibit 29 to his affidavit photographs of
articles of clothing sold by Respondent bearing the term NAUGLES. Petitioner has
moved to strike the exhibit on the ground that Mr. Chillingworth lacks personal
knowledge, cannot authenticate the exhibit and is unable to lay the proper
foundation for its introduction into the record. During his cross-examination, Mr.
Chillingworth testified that he did not take either photograph, that he could not
identify the person who did. He further testified that prior to executing his affidavit,
he had never seen the photographs, and that he could not identify who provided
them. Chillingworth Cross-Examination Testimony 15:18-16:18; 85 TTABVUE 20.
In view thereof, Petitioner’s objection is sustained. Mr. Chillingworth was unable to
authenticate and provide the proper foundation for the exhibit.
D. Petitioner’s Objection to Testimony elicited by Respondent during his
Cross-Examination on the Subjects of Respondent’s Clothing
Registration and the sale of “Naugles”-Branded Clothing

Petitioner objects to all testimony elicited by Respondent during cross-
examination of Petitioner on the subject of Respondent’s clothing registration, as
well as any statements regarding the actual sales of “Naugles”-branded clothing on
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the ground that these subjects were not included in Petitioner’s testimonial
affidavit. Federal Rule of Evidence 611(b) states “Cross-examination should not go
beyond the subject matter of direct examination.” Petitioner’s affidavit, which took
the place of Petitioner’s live direct testimony, is silent on these particular subjects,
and therefore Petitioner’s objection is sustained.
E. Petitioner’s Objection to Respondent’s Twitter Posts Made after the
Filing of His Application

Petitioner objects on the ground of relevancy to all testimony Respondent elicited
from Petitioner during cross-examination on the subject of posts Petitioner made to
his “Senor Naugles” Twitter account after the filing of Petitioner’s intent-to-use
application. Petitioner contends that the only “tweets” that are relevant to the issue
of standing are those which took place prior to the filing of Petitioner’s application.
Respondent maintains that the evidence is relevant not to Petitioner’s standing but
rather to consumer perceptions and the “goodwill” associated with the NAUGLES
mark, which Respondent claims is directly relevant to abandonment.
The testimony elicited on cross-examination concerns Petitioner’s Twitter
postings which took place in 2013, after the filing of the petition to cancel and are
such are not relevant to the issue of standing. See Fed. R. Evid. 401. Petitioner’s
objection is therefore sustained.
F. Respondent’s Objections to Alleged Statements Made by Third-Parties
to Petitioner

Respondent objects to all testimony by Petitioner pertaining to alleged
statements made by non-parties to this proceeding as inadmissible hearsay. More
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specifically, Petitioner testified as to alleged conversations with the following
individuals: Barbara Caruso, Jeff Naugle, John Joseph Naugle, Bill Naugle and
William O’Dell.14 Insofar as the out of court statements are black letter hearsay and
Respondent has not established that any exceptions to the hearsay rule apply, these
objections are sustained.15 See Fed. R. Evid. 801.
G. Respondent’s Objection to Article Entitled “Adios to Naugles; Fast
Food Chain to Switch to Del Taco”

Respondent objects to an article entitled “Adios to Naugles; Fast Food Chain to
switch to Del Taco” from the Orange County Register dated May 17, 1989 on the
ground of hearsay. Respondent maintains that Petitioner relies on the article for
the truth of the matter asserted therein, namely that Respondent has abandoned
use of its registered NAUGLES mark in connection with restaurant services with no
intent to resume.
We agree with Respondent that the article is hearsay if relied upon for the truth
of the statements in it, Fed. R. Evid. 801, and can only be used to demonstrate what
the article shows on its face, in other words, that the article was published and
available to the public on that particular date. See Syngenta Crop. Prot. Inc. v. Bio-
Chek LLC, 90 USPQ2d 1112, 1117 n. 7 (TTAB 2009). It is therefore of little, if any,
probative value in proving Petitioner’s claim of abandonment. Respondent’s
objection is therefore sustained.

14 As noted earlier (footnote 9), Petitioner is estopped from submitting the testimony of
William O’Dell.
15 In view thereof, Respondent’s objection to Petitioner’s testimony regarding alleged
conversations and interactions with Jeff Naugle based on documents and evidence not
produced during discovery is moot.
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H. Respondent’s Objection to Petitioner’s Opinion Testimony
Pursuant to Federal Rule of Evidence 701, Respondent objects to all opinion
testimony offered by Petitioner regarding ultimate conclusions of law as to his claim
of abandonment and the sufficiency of Respondent’s 2006 renewal of its involved
registration. With or without his testimony, we assume Petitioner’s belief in the
merit of his claims. Nonetheless, it is the Board which must determine the issues in
this case, and Petitioner’s legal opinions are not helpful in that task. Respondent’s
objection is sustained to the extent that we have disregarded any opinion testimony
regarding the ultimate disposition of the abandonment claim asserted herein as
well as any opinions concerning Respondent’s registration renewal. See, e.g.,
Alcatraz Media v. Chesapeake Marine Tours Inc., 107 USPQ2d at 1753 n.6; Steiger
Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984); Mennen Co. v.
Yamanouchi Pharm. Co., 203 USPQ 302, 305 (TTAB 1979).16
III. Background
Commencing in the 1970s, Naugles, Inc. operated a chain of restaurants in
California under the NAUGLES service mark. In 1988, Respondent purchased all
assets of the Naugles restaurant business, including the NAUGLES brand name.
Chillingworth Affidavit ¶ 2; 78 TTABVUE 2. The last restaurant named Naugles

16 See also Jones & Laughlin Steel Corp. v. Jones Eng’g Co., 292 F.2d 294, 130 USPQ 99,
100 (CCPA 1961) (“The witnesses did not cite any instances of actual confusion but merely
expressed an opinion as to the origin of the goods. Such opinions are not controlling.”);
Quaker Oats Co. v. St. Joe Processing Co., 232 F.2d 653, 109 USPQ 390, 391 (CCPA 1956)
(“[W]e deem it necessary to comment on the weight to be given the witnesses’ opinions that
the marks would be likely to cause confusion. In this respect it has been held that such
testimony amounts to nothing more than an expression of opinion by the witness, which
obviously is not binding upon either the tribunals of the Patent Office or the courts.”).
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closed on approximately October 25, 1995, and Respondent has not re-opened or
operated any Naugles “branded” restaurants since then. Chillingworth Affidavit ¶
2; 78 TTABVUE 2. Respondent’s Admission Nos. 1-17, 22, and 23; Chillingworth
Cross-Examination Testimony 54:1-24, 85 TTABVUE 58.
Petitioner is an online blogger who writes about the topic of food in Orange
County, California. Ziebarth Affidavit ¶ 2; 757 TTABVUE 2. Petitioner posted a
blog entry in 2008 reminiscing about the “old” Naugles Southern California
restaurants. Id. at ¶ 2; 57 TTABVUE 2-3. He testified that he originally intended
the blog entry to be a “remembrance” of the chain, but noticed that “the entry got a
lot of attention by way of people posting responses, indicating how much they liked
the Naugles food and wished it would return.” Id.; Ziebarth Cross-Examination
Testimony 16:17-17:17 (discussing statistics regarding visits to Petitioner’s food
blog); 76 TTABVUE 19-20. Petitioner then arranged a meeting with Ms. Barbara
Caruso, whom he believed was the “long-time public relations representative for Del
Taco,” and whom he first became acquainted with after she sent him information to
post on his blog about Del Taco menu items. Ziebarth Affidavit ¶ 6; 57 TTABVUE 4.
He suggested to Ms. Caruso that Del Taco bring back the food items that were
served in the former Naugles restaurants. Id. He further testified that despite his
efforts to follow-up with an additional meeting, no further meetings occurred, with
Ms. Caruso or anyone else affiliated with Respondent. Id. at ¶¶ 6-7; 57 TTABVUE
4-5. Believing that Respondent no longer had any interest in using the NAUGLES
mark and that Respondent had legally abandoned the mark, Petitioner decided that
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he would open his own restaurant under the name NAUGLES. Id. at ¶¶ 3 and 12;
57 TTABVUE 2, 7.
Petitioner then filed on May 17, 2010 Application Serial No. 85040746 for the
mark NAUGLES in standard-character format for “cafeteria and restaurant
services” in International Class 43, alleging a bona fide intent to use the mark in
commerce. After the Trademark Examining Attorney refused registration under
Section 2(d) of the Trademark Act citing the involved registration,17 Petitioner filed
the complaint in this proceeding on December 20, 2010. Examination of Petitioner’s
application was suspended pending the outcome of this proceeding.
On March 30, 2011, Respondent filed its own application to register NAUGLES
in standard character format for “Clothing, namely, shirts, t-shirts, hats, and
jackets” in International Class 25, alleging a date of first use in commerce of
September 15, 2011. The application successfully registered on December 18, 2012
as Registration No. 4261951.
IV. Standing
A plaintiff in a Board proceeding must prove standing as a threshold matter in
order to be heard on its substantive claims. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). The purpose of the
standing requirement is to prevent mere intermeddlers from initiating proceedings,
and derives from Section 14 of the Trademark Act which provides in relevant part
“[a] petition to cancel a registration of a mark. . . may be filed . . . by any person who

17 A surname refusal was made as well.
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believes that he is or will be damaged” by the registration. The Court of Appeals for
the Federal Circuit has enunciated a liberal threshold for determining standing,
namely, whether a plaintiff's belief in damage has a reasonable basis in fact and
reflects a real interest in the case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1028 (Fed. Cir. 1999). See also Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).
The petition to cancel contains the following allegations relevant to Petitioner’s
standing:
1. Petitioner is the owner of U.S. Trademark Application Serial No.
85/040,746 filed on May 17, 2010 for the mark NAUGLES in
connection with “cafeteria and restaurant services” (“Petitioner’s
Application”) in International Class 43.

2. Petitioner has been, and continues to be, damaged in that
Trademark Registration No. 1,043,729 has been cited against
Petitioner’s Application as a basis for refusal of registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d).

Respondent challenges Petitioner’s standing to bring the cancellation proceeding.18
When a plaintiff in a Board proceeding pleads and later proves that it has been
refused registration of its mark because of the defendant’s registration, it has
established a “reasonable belief” of damage, thereby satisfying the standing
requirement. See Saddlesprings Inc. v. Mad Croc Brands Inc., 104 USPQ2d 1948,
1950 (TTAB 2012) (standing adequately alleged by allegation that petitioner’s

18 Petitioner, relying on a non-precedential Board interlocutory order in a different
proceeding, asserts that because Respondent failed to amend its answer to assert an
affirmative defense that Petitioner lacks standing, Respondent is now barred from arguing
that issue. That proposition is contrary to the long-standing principle that standing must be
proved by the plaintiff, see Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982), and as such the lack of standing does not need to be pleaded as an
affirmative defense.
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intent-to-use application has been refused based on respondent’s registrations).
During the interlocutory phase of this proceeding, the Board informed the parties
that “the fact that Petitioner’s intent-to-use application was refused registration
based on a likelihood of confusion with the involved registration does not preclude
Respondent from challenging Petitioner’s assertion in his application that he has a
bona fide intent to use the mark in commerce. Because Petitioner bears the
ultimate burden of proof on the issue of standing, petitioner may be required to go
beyond the mere pendency of his applications and establish his entitlement to file
the application upon which his standing claim is based.” Interlocutory Order dated
January 21, 2012; 16 TTABVUE 3-4. This is the precise basis upon which
Respondent challenges Petitioner’s standing, i.e. that Petitioner did not in fact have
a bona fide intention to use the NAUGLES mark, and therefore has no real interest
and reasonable belief in damage resulting from the citation of Respondent’s mark as
a bar to applicant’s registration.19
Here, Petitioner has submitted evidence that his intent-to-use application was
refused registration under Section 2(d) of the Trademark Act based on Respondent’s
registered mark. Ziebarth Affidavit ¶ 4, Exs. A and B; 57 TTABVUE 3, 19
(Application Serial No. 85040746 file history). In addition, the record shows that
Petitioner took concrete steps towards using the mark, thereby demonstrating a

19 We hasten to add that standing in a Board inter partes proceeding is determined as of the
filing date of the complaint, not the filing date of a plaintiff’s pleaded application. For this
reason, Petitioner’s actions before and after the filing date of his application up to the filing
date of the complaint are also relevant to the issue of standing.

Cancellation No. 92053501
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bona fide intent to use sufficient to support his application. Petitioner testified that
he discussed his ideas with Rob Hallstrom, owner of a public relations marketing
agency which specializes in the restaurant industry and co-owner of three
restaurants in Orange County, California. Mr. Hallstrom corroborated Petitioner’s
testimony by explaining that in January 2010, Petitioner approached him about
helping him “make this idea of opening restaurants under the NAUGLES name a
reality.” Hallstrom Affidavit ¶ 2 and Ex. H; 59 TTABVUE 2 and 8-25 (Petitioner
and Hallstrom email exchange). He further testified that he and Petitioner met in
person to talk about Petitioner’s idea, that they had several follow-up discussions
about potential properties for restaurant locations and that he and Petitioner
actually looked at a few properties, including one that was formerly a Naugles
restaurant. Hallstrom Affidavit ¶3; 59 TTABVUE 3.
The record also shows that Petitioner recruited Daniel Dvorak, the Lead
Industrial Designer/Product Designer for Alco Designs and owner of his own design
consulting business Protodraft Designs, who offered to handle marketing for
Petitioner’s venture. Dvorak Affidavit ¶ 1, 4; 60 TTABVUE 3. Mr. Dvorak testified
that between February and September 2010 he met regularly with Petitioner, and
corroborated Petitioner’s testimony that Petitioner was actively seeking financing
for his planned business as well as scouting potential locations. Dvorak Affidavit ¶¶
3 and 5; 60 TTABVUE 3.
Petitioner submitted evidence of his presence on the Internet and in social media
to identify planned, upcoming restaurant services under the NAUGLES name based
Cancellation No. 92053501
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on activities which took place prior to filing his intent to use application. For
example, he submitted evidence that on January 13, 2010, he purchased the domain
name www.nauglestacos.com and currently operates a website entitled “Naugles
Tacos and Burgers” under that domain name. Ziebarth Affidavit ¶ 17, Exs. K
(domain name order confirmation from GoDaddy.com) and Ex. L; 57 TTABVUE 9
and 133. Prior to filing his intent to use application, Petitioner also opened a
Twitter account “@Naugles” and actively “tweeted” under the handle “Señor
Naugles.” Ziebarth Affidavit ¶ 18, 57 TTABVUE 10.
The aforementioned evidence shows that Petitioner had a bona fide intent to use
the mark and is therefore entitled to rely upon the ownership of his refused
application to prove standing. In other words, the record shows that he is not a
mere intermeddler, but has a real interest, that is to say, “a direct and personal
stake” in the outcome of this proceeding and reasonable belief in damage, and
therefore has standing. See Ritchie v. Simpson, 50 USPQ2d at 1027.
V. Petitioner’s Abandonment Claim

We now consider Petitioner’s abandonment claim. Section 1127 of the
Trademark Act, 15 U.S.C. § 1127 provides, in pertinent part, that a mark is
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
three consecutive years shall be prima facie evidence of abandonment.
“Use” of a mark means the bona fide use of that mark made in the
ordinary course of trade, and not made merely to reserve a right in a
mark.

Cancellation No. 92053501
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As explained by our primary reviewing court, the Court of Appeals for the
Federal Circuit:
A showing of a prima facie case creates a rebuttable presumption that the
trademark owner has abandoned the mark without intent to resume use.
The burden then shifts to the trademark owner to produce evidence that
he either used the mark during the statutory period or intended to resume
use. The burden of persuasion, however, always remains with the
[challenger] to prove abandonment by a preponderance of the evidence.

Crash Dummy Movie LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1316
(Fed. Cir. 2010) (internal citations omitted). “Use in commerce” for services is
defined as:
The bona fide use of a mark in the ordinary course of trade…. [A] mark
shall be deemed to be in use in commerce —… on services when [1] it is
used or displayed in the sale or advertising of services and [2] the
services are rendered in commerce, or the services are rendered in more
than one State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in connection with
the services.

15 U.S.C. § 1127 (emphasis and numbering added). Respondent cannot rely on the
mere existence of its federal registration or subsequent renewals to defend against
Petitioner’s claim of abandonment. If it could do so, a contested cancellation based
on abandonment could never be successful, despite the fact that such claims are
clearly contemplated by statute. See Trademark Act § 14.
Noah Chillingworth, Respondent’s Vice President of Marketing, averred that
“Del Taco stopped using the NAUGLES trademark as the actual name of a
restaurant on October 25, 1995.” Chillingworth Affidavit ¶ 2; 78 TTABVUE 2.
During cross-examination, he specifically explained that as part of transitioning the
Naugles brand to Del Taco, “all Naugles restaurants were closed down as of October
Cancellation No. 92053501
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25, 1995.” Chillingworth Cross-Examination Testimony 65:21-25; 85 TTABVUE 69.
Respondent admitted that for the years 1995-2010 it “did not own a restaurant to
the public [sic] named ‘Naugles,’” which corroborates Mr. Chillingworth’s testimony.
See Respondent’s Answers to Requests for Admissions Nos. 1-16; 53 & 54
TTABVUE. Respondent further admitted that it currently does not own a
restaurant named Naugles in the United States, nor does it have any plans to
operate a restaurant under the name Naugles within the next five years.
Respondent’s Answers to Requests for Admission Nos. 17 and 23; 53 TTABVUE 7,
14. Thus, the record unequivocally shows that Respondent ceased operating the last
restaurant bearing the NAUGLES name on October 25, 1995.
Notwithstanding the uncontroverted evidence above, Respondent in its brief
asserts that it continued to use the NAUGLES mark “immediately” following the
closure of the last free-standing Naugles restaurant. Respondent’s Brief p. 9. More
specifically, Mr. Chillingworth averred that Del Taco “has never stopped using the
mark in connection with its restaurant services,” and “that since 1995 Del Taco has
used the NAUGLES mark in advertising and on clothing.” Chillingworth Affidavit ¶
2; 78 TTABVUE 2.
We focus first on Mr. Chillingworth’s statements regarding Respondent’s use of
the NAUGLES mark in connection with clothing. To be clear, use of a mark on
collateral or promotional goods such as clothing does not constitute service mark
usage for the identified services. Use of a mark in connection with services requires
that the mark be “used or displayed in the sale or advertising of services” and that
Cancellation No. 92053501
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“the services are rendered in commerce.” Trademark Act § 45, 15 U.S.C. § 1127.
“Use” of a service mark requires more than mere advertisement. Thus, even if
Respondent’s clothing could be considered an advertisement for restaurant services,
the mark is not in use in connection with restaurant services if restaurant services
are no longer “rendered” or, in other words, no longer provided. Couture v. Playdom,
Inc., — F.3d —, — USPQ3d —, No. 2014–1480, slip op. at 5 (Fed. Cir. March 2,
2015) (“rendering of services” to obtain a trademark registration requires the actual
provision of such services). See Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899
F.2d 1575, 14 USPQ2d 1390, 1395 (Fed. Cir. 1990) (promotional use of mark in
sales of “incidental” items such as whiskey, pens, watches, sunglasses, and food did
not constitute use of mark for cigarettes). For this reason, Respondent cannot rely
on any purported sale of clothing items bearing the NAUGLES mark to refute
Petitioner’s abandonment claim because NAUGLES restaurants have been defunct
since 1995 and Respondent has not rendered restaurant services under the mark
since that time.
We turn our attention now to a one page food menu displaying the phrase “Viva
Naugles Viva Del Taco,” which Respondent contends constitutes documentary
evidence of continuous use of its registered mark for restaurant services.
Chillingworth Affidavit ¶ 3, Ex. 11; 78 TTABVUE 2 and 7-8.
Cancellation No. 92053501
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Respondent argues in its brief that the menu is illustrative of its “Viva Naugles
Viva Del Taco” marketing campaign. However, on cross-examination, when asked to
Cancellation No. 92053501
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provide a date or dates when this particular menu was used, Mr. Chillingworth
responded “I can’t tell you the date exactly it was used, but I believe it was used,
since it was kept in our archive information.” Chillingworth Cross-Examination
Testimony 58:22-59:3, 85 TTABVUE 62-63. He also stated that he did not know
when this piece of advertising was created, id. at 66:1-8; 85 TTABVUE 70, and
further testified that since working for Del Taco in 2009, he has not seen this
particular menu in use. Id. at 60:11-15; 85 TTABVUE 64. Mr. Chillingworth
speculated that the advertising material was designed to “facilitate the two brands
coming together.” Id. at 60:8-10; 85 TTABVUE 60. Use of a mark on a menu clearly
is an acceptable method of service mark usage for an actively operating restaurant.
Nonetheless, Mr. Chillingworth’s testimony is insufficient to show use within the
last three years or on any particular date, much less continuous use since the
closure of the last free standing Naugles restaurant in 1995, or even an intent to
resume use.
Mr. Chillingworth also averred that Respondent has maintained use of the
NAUGLES mark on the “official Del Taco website advertising its restaurant
services.” Chillingworth Affidavit ¶ 4; 78 TTABVUE 3. In support thereof,
Respondent submitted thirteen screenshots from the Wayback Machine purporting
to show use by Del Taco of the phrase “Viva Naugles Viva Del Taco” on the history
page of its www.deltaco.com website over the three-year time period of 2003-2006
Respondent’s Notice of Reliance Exs. 16-28; 77 TTABVUE. Although the dates vary,
the content of each screenshot is identical. Upon review, however, the web pages
Cancellation No. 92053501
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merely recount the history of the merger of the Naugles and Del Taco chains. The
web pages are clearly not advertisements for contemporaneously-rendered
restaurant services. Again, advertising a service is not synonymous with rendering
a service. Couture, slip op. at 4-5 (an “open and notorious public offering alone” is
insufficient to establish use in commerce).
We hasten to add that even if we could construe the web pages as evidence of
service mark usage of the registered term NAUGLES for restaurant services (and
we cannot), there is no evidence of record of Respondent’s use or intent to resume
use prior to 2003, leaving unrebutted Petitioner’s prima facie claim of abandonment
for the years 1995-2003. Respondent’s activities in 2003 are not evidence of the use
or the intent to resume use necessary to overcome the presumption of
abandonment. Subsequent use of a mark cannot retroactively cure past
abandonment. See Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1422 (TTAB
2008). Cf. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87
USPQ2d 1179, 1182 (TTAB 2008) (citing Silverman v. CBS Inc., 870 F.2d 40, 9
USPQ2d 1778, 1783 (2d Cir. 1989)).
Respondent also argues that it incorporates into its current Del Taco restaurants
“other aspects” of the now defunct Naugles restaurants relying primarily on the
purported existence of a Naugles “secret menu.” Respondent’s Brief, p. 9. Indeed,
Respondent asserts that the “secret menu” is “one of the most successful examples
of the ongoing use and consumer recognition of the NAUGLES trademark, brand,
and business as part of Del Taco’s restaurant services that has continued to the
Cancellation No. 92053501
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present even after closure of the NAUGLES branded restaurants.” Respondent’s
Brief, p. 10; 92 TTABVUE 15 (emphasis in original). The “secret menu” is not an
actual, physical menu but rather, as Mr. Chillingworth explained, refers to the
concept that consumers have the ability to request food items previously offered in
Naugles restaurants:
[S]ince 1988, Del Taco has consistently offered menu items that were
originally sold in NAUGLES named restaurants owned by the prior
owner Naugles, Inc. I am informed and believe that consumers recognize
these items as part of a “NAUGLES Secret Menu” within Del Taco’s
restaurant services.

Chillingworth Affidavit ¶ 6; 78 TTABVUE 3. To further clarify the “secret menu”
concept, Petitioner elicited the following testimony from Mr. Chillingworth upon
cross-examination:
Q. …What are these secret items you are referring to? What are they?

A. They are items you could previously buy at Naugles and that now
you can buy at Del Taco.

Q. Okay. What are they?

A. As an example, the bun taco would be one.

Q. Anything else?

A. MACHO bacon and egg burrito, I believe. And the others that
guests come up and ask us for that we in some cases try to make or
can make for them.

Q. Like a special order, almost?

A. Yes, exactly if they request it.

Q. Okay.

A. So a cheese burrito or something to that effect.
Cancellation No. 92053501
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…

Q. I’m trying to establish what you – what your testimony considers
Naugles secret menu items. So I understand what you’re saying,
that there was kind of a fusion of the menus.

A. Yeah.

Q. But we’re talking about customers’ perception of Naugles items.

A. Yeah.

Q. So could you please – other than the bun taco and the MACHO
bacon and egg burrito, are there other items that you’re referring
to that you consider part of the Naugles secret menu?

A. I would say mainly those two items.

Q. Okay. Is there any place online, flyers, in the restaurants itself,
where Del Taco informs the customers that the bun taco or the
MACHO bacon and egg burrito are old Naugles items?

A. Not specifically.

Chillingworth Cross-Examination Testimony 85:12-87:12; 85 TTABVUE 89-91.
Respondent was unable to point to any further testimony or documentary evidence
regarding the “secret” Naugles menu. There is thus no evidence of the appearance of
the NAUGLES mark on a secret menu or advertising materials showing Del Taco’s
promotion of a Naugles “secret menu.” Nor did Respondent provide evidence of any
advertising expenditures devoted to promoting NAUGLES or a Naugles “secret
menu.” In any event, even if the record did support use of a “secret menu,” it is not
at all clear that there is any use — by Respondent or its customers — of the
NAUGLES mark itself in connection with the secret menu. Mr. Chillingworth
testified that customers in Respondent’s current restaurants sometimes ask for
Cancellation No. 92053501
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items from the old Naugles restaurants, such as the “bun taco,” “MACHO bacon and
egg burrito,” or “cheese burrito.” But there is no testimony or other evidence that
the word NAUGLES is actually written or uttered in these transactions. Thus the
current sale of food items that were previously served at the now-defunct Naugles
restaurant establishments cannot be construed as service mark use of NAUGLES
for restaurant services.
In another attempt to show continuous use of its mark, Respondent in its brief
asserts that it ran commercials featuring the NAUGLES mark to advertise
restaurant services. Respondent’s Brief, p. 9. The record, however, is utterly devoid
of such evidence. Mere assertions in a brief, without evidentiary support, are
insufficient. In re Bookbinder's Rest., Inc., 240 F.2d 365, 112 USPQ 326, 328 (CCPA
1957).
Lastly we note that Respondent contends that it holds “considerable goodwill” in
the Naugles mark, sufficient to defeat Petitioner’s claim of abandonment. The
Board has never found residual goodwill to be a defense to abandonment, and we
decline to do so here. The continued existence of enthusiasts of the old Naugles food
items does not negate the statutory presumption of abandonment.
The record establishes that Respondent made no service mark use of NAUGLES
after the closure of the last Naugles restaurant on October 25, 1995 for far longer
than three consecutive years. Petitioner has therefore made a prima facie case of
abandonment. The burden of production thus shifted to Respondent to prove that it
either used the mark during the statutory period or intended to resume use. Since
Cancellation No. 92053501
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Respondent’s evidence shows no service mark use of NAUGLES, we next focus on
whether Respondent intended to resume use.20
Mr. Chillingworth averred that prior to the institution of this proceeding,
Respondent began planning a new advertising campaign called “NAUGLES Secret
Menu” for restaurant services designed to “play on the consumer driven ‘NAUGLES
Secret Menu.’” Chillingworth Affidavit ¶ 7; 78 TTABVUE 2. As documentary
support, Mr. Chillingworth submitted and attested to the authenticity of copies of
two separate internal marketing presentations made in April 2009 and June 2010
discussing “the details of the ‘NAUGLES Secret Menu’ campaign.” Id. and
Confidential Exs. 30 & 31. Because these materials are designated confidential, we
cannot discuss their contents. Suffice to say, however, even if the materials showed
an intent to resume use commencing in 2009, this is much too late to save
Respondent’s registration. Once a mark has been abandoned, the abandonment
cannot be undone, and a registration of the mark can be cancelled on that basis
notwithstanding any later use or intent to resume use. “Merely because a party
used a mark a long time ago and it could use the mark in the future is not sufficient
to avoid abandonment.” Hornby v. TJX, 87 USPQ2d at 1421 (citing Silverman v.
CBS Inc., 870 F.2d 40, 9 USPQ2d 1778 (2d Cir. 1989)). In Silverman v. CBS Inc.,
the Court of Appeals for the Second Circuit addressed the issue of whether the
statutory phrase “intent not to resume use” means “intent never to resume use or

20 Because it constitutes hearsay and cannot be used to prove the truth of the matter
asserted, the article “Adios Naugles” does not establish that Respondent had no intent to
resume use of NAUGLES.
Cancellation No. 92053501
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does it merely mean intent not to resume use within the reasonably foreseeable
future?” Id. at 1782,
We conclude that the latter must be the case. The statute provides that
intent not to resume may be inferred from circumstances, and two
[now three] consecutive years of non-use is prima facie abandonment.
Time is thereby made relevant. Indeed, if the relevant intent were
intent never to resume use, it would be virtually impossible to
establish such intent circumstantially. Even after prolonged non-use,
and without any concrete plans to resume use, a company could almost
always assert truthfully that at some point, should conditions change,
it would resume use of its mark.

We do not think Congress contemplated such an unworkable standard.
More likely, Congress wanted a mark to be deemed abandoned once
use has been discontinued with an intent not to resume within the
reasonably foreseeable future. This standard is sufficient to protect
against the forfeiture of marks by proprietors who are temporarily
unable to continue using them, while it also prevents warehousing of
marks, which impedes commerce and competition.

Id.

Respondent also attempts to rely on its use of the mark NAUGLES commencing
in 2011 in connection with clothing as evidence of an intent to resume use in
connection with restaurant services. Chillingworth Cross-Examination 19:10-17,
22:18-24:2, 24:3-15; 85 TTABVUE 23, 26-28.21 Again, for the reasons stated above,
the use of Respondent’s mark on promotional items almost two decades after closure
of the last restaurant does not fall within the “reasonably foreseeable future,” and
such long-after-the-fact evidence cannot be relied upon as evidence of an intent to
resume use.

21 We further observe that Respondent filed its application which eventually matured into
Registration No. 4261951 after this proceeding was instituted.
Cancellation No. 92053501
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“[T]he Lanham Act was not intended to provide a warehouse for unused marks.”
Imperial Tobacco v. Philip Morris, 14 USPQ2d at 1394. See 15 U.S.C. § 1064(3) (a
claim for cancellation of a registration may be filed at any time if the registered
mark has been abandoned). An inchoate wish to use a mark after a lengthy hiatus
is an insufficient basis for maintaining a registration. Such is the case here where
Petitioner has shown by a preponderance of the evidence that Respondent has
abandoned use of its registered mark NAUGLES for “restaurant services” without
an intent to resume.
DECISION: The petition for cancellation is granted on Petitioner’s claim of
abandonment, and Registration No. 1043729 will be cancelled in due course.