Indestructible Shoes LLCv.Jarrett M. Mason

Trademark Trial and Appeal Board

May 3, 2021

92072158 (T.T.A.B. May. 3, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Indestructible Shoes LLC
v.
Jarrett M. Mason
_____

Cancellation No. 92072158
_____

Abraham Lichy of The Lichy Law Firm PC,
for Indestructible Shoes LLC.
Jarret M. Mason, pro se.
_____

Before Mermelstein, Greenbaum and Johnson,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Jarrett M. Mason (“Respondent”) owns a registration on the Principal Register for
the mark INDESTRUCTIBLE and Design, displayed as , for
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Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Athletic shirts; Body
shirts; Button down shirts, in International Class 25.1
Indestructible Shoes LLC (“Petitioner”) filed a Petition to Cancel the Registration
on the ground that Respondent has abandoned use of the registered mark with an
intent not to resume use, and on the ground of fraud in procuring the Registration.
Petitioner also pleaded ownership of a trademark application for INDESTRUCTIBLE
SHOES (Serial No. 88137714). Other than acknowledging that Petitioner is a
competitor, as discussed below, Respondent denied the salient allegations in its
Answer.

1 Reg. No. 4928050 (“Registration”) issued on March 29, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a) based upon a claim of first use anywhere since at least
as early as June 2, 2013, and first use in commerce since at least as early as March 21, 2014.
The Registration includes the following description of the mark, and the following color claim:

The mark consists of flames in dark blue, blue and light blue emanating from
a stylized design of a sword. The hilt of the stylized sword design is in the colors
black, brown, bronze, copper, gold, and yellow and contains a dark blue jewel
with a light blue center. The blade is in navy blue, dark blue, blue and light
blue shading. Surrounding the combination of blue in the blade is a
combination of dark brown, brown and copper that transitions into yellow and
gold towards the tip of the blade. Inside the blue combination of the blade there
is a pattern design of brown, yellow and white. The stylized sword design and
its various parts are outlined in white. Near the bottom of the image and in
front of the bottom of the sword is the wording “INDESTRUCTIBLE” in black,
dark blue, blue, and light blue with an incomplete box outline surrounding the
wording in dark brown, brown, copper, and gold. The letters “RU” in
“INDESTRUCTIBLE” are partially outlined in white where it overlaps the
sword image.
The color(s) blue, light blue, navy blue, dark blue, gold, yellow, bronze, black,
brown, copper, dark brown and white is/are claimed as a feature of the mark.
Cancellation No. 92072158

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I. Record
The record consists only of the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the application file underlying Respondent’s
Registration.2 Neither party took testimony or introduced any evidence during its
testimony period.
Both parties filed briefs, and both attached evidence to their briefs. We do not
consider any of this evidence as it was not made of record during the assigned
testimony periods, and there is no stipulation, granted motion or Board order
allowing submission of evidence in this manner. See Trademark Rule 2.121(a), 37
C.F.R. § 2.121(a) (“No testimony shall be taken or evidence presented except during
the times assigned, unless by stipulation of the parties approved by the Board, or
upon motion granted by the Board, or by order of the Board.”); Hole In 1 Drinks, Inc.
v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020) (exhibits attached to brief not
considered).3

2 In its Brief, Petitioner states that its pleaded application is part of the record. 19 TTABVUE
7. Petitioner is mistaken. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), only pertains to the
file of an application or registration that is the subject of an opposition or cancellation
proceeding. A party who wishes to make the file of a plaintiff’s pleaded application or
registration of record may do so under notice of reliance per Trademark Rule 2.122(e), 37
C.F.R. § 2.122(e), or as a testimony exhibit, neither of which was done here.
3 We add that the evidence is of no probative value as it is either (1) not authenticated
(purported photos and sales invoices submitted as Exhibit A to Petitioner’s Brief (19
TTABVUE 19-34); purported screenshots from Petitioner’s and Respondent’s websites,
submitted as Exhibits A and C, respectively, to Respondent’s Brief (20 TTABVUE 14-17 and
28-43); and purported screenshots of Better Business Bureau ratings of Petitioner and a
YouTube review of Petitioner, submitted as Exhibit B to Respondent’s Brief (20 TTABVUE
18-27); or (2) consists of Petitioner’s discovery requests (interrogatories and document
requests) with no responses from Respondent (Exhibits B and C, respectively, to Petitioner’s
Brief, 19 TTABVUE 35-48 and 49-59). Consideration of this evidence, therefore, would have
had no bearing on this decision.
Cancellation No. 92072158

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II. Petitioner’s Entitlement to a Statutory Cause of Action4
Entitlement to a statutory cause of action must be established in every inter
partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 125-26, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may seek to cancel a registration for a mark when
such cancellation is within the zone of interests protected by the statute, Section 14
of the Trademark Act, 15 U.S.C. § 1064, and the plaintiff has a reasonable belief in
damage that is proximately caused by registration of the mark. Corcamore, LLC v.
SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020). “Proof of
[entitlement to a statutory cause of action] in a Board [cancellation] is a low
threshold, intended only to ensure that the plaintiff has a real interest in the matter,
and is not a mere intermeddler.” Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1117 n.8 (TTAB 2009) (citing Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). Because Petitioner has not pleaded and
introduced a United States trademark registration, Petitioner must prove its
entitlement to a statutory cause of action through other evidence.
Petitioner alleges that Petitioner’s application Serial No. 88137714 for the mark
INDESTRUCIBLE SHOES was refused registration based on the Registration (1

4 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable.
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TTABVUE 4, ¶10), and that continued existence of the Registration will irreparably
harm Petitioner. Id., ¶11. Petitioner did not make this application of record, and as
noted above, Petitioner submitted no testimony or evidence during its assigned
testimony period. However, in its Answer to the allegation in Paragraph 11 of the
Petition to Cancel (which Respondent reproduced in the body of its Answer, and we
do as well), Respondent asserts:
11. Continued existence of Registration No. 4,928,050 will cause
irreparable harm, injury and damage to Petitioner.
False! The petitioner (indestructible shoes) is currently causing
irreparable harm, injury and damage to my brand. I have proof of the
complaints from customers that have purchased their products which
damages my brand and reputation in the marketplace due to the fact
that petitioner is a fraud company and sells poor quality products.
5 TTABVUE 4, ¶11.
By this response, Respondent acknowledges that the parties are competitors. This
acknowledgement is sufficient to show that Petitioner has an interest in cancellation
of the Registration that is squarely within the zone of interests protected by the
statute, and that it has a reasonable belief that damage is proximately caused by
continued registration of Respondent’s mark. See, e.g., Books on Tape, Inc. v.
Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987) (finding
competitor has standing because it has an interest in the outcome beyond that of the
general public); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, *6 (TTAB 2020)
(entitlement to a statutory cause of action found where petitioner and respondent are
competitors); Grote Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1201-2
(TTAB 2018) (standing found where plaintiff and defendant are competitors).
Cancellation No. 92072158

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III. Fraud and Abandonment Claims
As plaintiff in this proceeding, Petitioner must prove its abandonment claim by a
preponderance of the evidence, see Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (citing W. Fla. Seafood
v. Jet Rests., 31 F.3d 1122, 1125, 31 USPQ2d 1660 (Fed. Cir. 1994)), and its fraud
claim by “clear and convincing” evidence. See In re Bose Corp., 580 F.3d 1240, 91
USPQ2d 1938 (Fed. Cir. 2009), citing Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033,
1044 (TTAB 1981)).
In paragraphs 3-9 of the Petition to Cancel, Petitioner makes the following
allegations about Respondent’s purported abandonment, and fraud in the
procurement, of the Registration:
3. Upon information and belief, Registrant is not using the mark
INDESTRUCTIBLE (plus design) in the United States in connection
with the goods of Registration No. 4,928,050 in any capacity and has
never used the mark in the United States.
4. Upon information and belief, on September 20, 2015, Registrant,
aware that false statements would jeopardize its registration,
executed a declaration and submitted a specimen alleging use of the
mark of the application when in fact the mark was not in use.
5. Upon information and belief, on February 12, 2016, Registrant,
knowing that false statements would jeopardize its registration,
submitted a response to an office action, which contained a
subsequent specimen and declaration alleging use of the mark of the
application when in fact the mark was not in use.
6. Upon information and belief, Registrant did not have a bona fide
intention to use the mark in commerce in connection with the goods
listed in the application as of the date of filing of the application.
7. Upon information and belief, said false statements were made with
the intent to induce the USPTO to grant and maintain said
registration, and reasonably relying upon the truth of said false
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statements, the USPTO did, in fact, grant said registration to
Registrant.
8. Upon information and belief and based upon Internet research,
Registrant has not used its mark in commerce in connection with the
goods of Registration No. 4,928,050 within the past three years.
9. Upon information and belief, Registrant’s mark is abandoned.
1 TTABVUE 3-4.
Statements made in a petition to cancel are, unless admitted, merely allegations,
subject to proof at trial. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB
2010). Here, Respondent did not admit any of the foregoing allegations, and as noted
above, Petitioner submitted no trial evidence or testimony. Boyds Collection Ltd. v.
Herrington & Co., 65 USPQ2d 2017, 2020 n.10 (TTAB 2003) (“Although petitioner
pleaded ownership of common-law marks in the petition to cancel, such matters were
denied in respondent’s answer, and are therefore subject to proof. Without such
evidence, petitioner can prove neither its standing nor its substantive claims.”).
Likewise, Petitioner makes many unsupported statements in its Brief about
Respondent’s purported abandonment and fraud. See generally 19 TTABVUE 11-16.
However, counsel’s arguments are not evidence, and we will not rely on them. See Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005));
In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975)
(“Statements in a brief cannot take the place of evidence.”).
Modern House Wines LLC v. Hidden Wineries Inc., Cancellation No. 92058885
(August 7, 2017), a nonprecedential decision on which Petitioner relies (19 TTABVUE
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11-12, 15), is not to the contrary, and is factually distinguishable. There, the Board
granted a petition to cancel on grounds of nonuse and abandonment based on
discovery responses from the defendant, and copies of pages from the defendant’s
website, which the plaintiff timely and properly made of record during its assigned
testimony period. Also, Petitioner’s reliance on Nationstar Mortg. LLC v. Ahmad, 112
USPQ2d 1361 (TTAB 2014) is misplaced. 19 TTABVUE 13-16. In Nationstar, the
Board found fraud based on the evidence and testimony of record, not merely based
on averments in the application and arguments of counsel.5 We reiterate that
Petitioner made no evidence or testimony of record during its assigned testimony
period.
In short, Petitioner has not proven any of its pleaded claims.
IV. Conclusion
There is no evidence or testimony of record on which Petitioner can meet its
burden of proving its pleaded claims of abandonment or fraud, and Respondent has
not admitted any allegations pertaining to either claim. Absent such proof or
admissions, Petitioner cannot prevail on either claim.
Decision: The petition to cancel is denied.

5 Petitioner’s arguments concerning Respondent’s purported lack of documentary evidence of
use as inferring “culpable intent” to deceive the USPTO, 19 TTABVUE 14-16, are an
improper attempt to shift the burden of proof. Cf. Smith v. Olin, 209 USPQ at 1044 (fraud
must be proven “‘to the hilt’ with clear and convincing evidence.”).