Joe Van Gogh, Inc.v.Vincent Van Gogh Cafe, LLC

Trademark Trial and Appeal Board

Feb 4, 2021

92063316 (T.T.A.B. Feb. 4, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: February 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Joe Van Gogh, Inc.
v.
Vincent Van Gogh Cafe, LLC

_____

Cancellation No. 92063316
_____

David L. McKenzie and Susan Freya Olive of Olive and Olive PA,
for Joe Van Gogh, Inc.

Jordan Weisz, pro se,
for Vincent Van Gogh Cafe, LLC.

_____

Before Wellington, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Joe Van Gogh, Inc. (“Petitioner”) seeks to cancel Vincent Van Gogh Cafe, LLC’s
(“Respondent”) registrations for the following marks:1
VINCENT VAN GOGH (in standard characters) for

1 The petition to cancel was filed on March 14, 2016 prior to the fifth year anniversary dates
of the registrations. See nn. 2&3.
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Beverages made of tea; Black tea; Flavourings of tea; Fruit
teas; Green tea; Herb tea; Herbal tea; Iced tea; Japanese
green tea; Lime tea; Mixes in the nature of concentrates,
syrups or powders used in the preparation of tea based
beverages; Oolong tea; Sage tea; Tea; Tea bags; Tea for
infusions; Tea of parched powder of barley with husk
(mugi-cha); Tea of salty kelp powder (kombu-cha); Tea
pods; Tea substitutes; Tea-based beverages with fruit
flavoring; Theine-free tea sweetened with sweeteners in
International Class 30;2 and
VINCENT VAN GOGH PREMIUM COFFEE (in standard characters, “premium
coffee” disclaimed) for
Beverages made of coffee; Caffeine-free coffee; Chicory
based coffee substitute; Coffee; Coffee; Coffee beans; Coffee
flavored syrup used in making food beverages; Coffee pods;
Coffee substitutes; Coffee substitutes; Coffee-based
beverage containing milk; Ground coffee beans; Instant
coffee; Prepared coffee and coffee-based beverages; Roasted
coffee beans; Sugar-coated coffee beans in International
Class 30.3
As grounds for cancellation, Petitioner’s amended petition to cancel alleges as to
both registrations likelihood of confusion, false suggestion of a connection,4 and fraud
in the procurement of the registrations.5

2 Registration No. 3931277 issued March 15, 2011, Section 8 accepted, based on an
application filed April 28, 2007.
3 Registration No. 3941023 issued April 5, 2011, Section 8 accepted, based on an application
filed March 24, 2007. “Coffee” and “Coffee substitutes” are listed twice in the identification.
4 Petitioner acknowledges in its brief that it did not argue this claim, 60 TTABVUE 8 n.5,
and, we consider the false suggestion of a connection claim to have been waived. See Alcatraz
Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013)
(petitioner’s pleaded descriptiveness and geographical descriptiveness claims not argued in
brief deemed waived).
5 Petitioner initially brought this cancellation proceeding against Registration Nos. 3931277,
3941023, 4002506, 4109044, 4183582, 4287468, 4319499 for VAN GOGH and VAN GOGH-
derivative marks owned either by Vincent Van Gogh Café LLC, or Jordan Weisz or Vincent
Van Gogh Marketing LLC. 1 TTABVUE. On February 17, 2017, defendant Jordan Weisz
surrendered Registration Nos. 4002506 and 4109044 each for the mark VAN GOGH, and
Cancellation No. 92063316
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In the petition to cancel, Petitioner pleads ownership of the registered marks
JOE VAN GOGH6 and 7 both for
Chocolate-based beverages; Coffee-based beverages; Coffee; Coffee
beans; Espresso; Ground coffee beans; Hot chocolate; Iced coffee;
Prepared cocoa and cocoa-based beverages; Roasted coffee beans;
Tea-based beverages; Tea in International Class 30;
Coffee roasting and processing in International Class 40;

defendant Vincent Van Gogh Marketing LLC surrendered Registration No. 4183582 for the
mark VINCENT VAN GOGH. 16 TTABVUE. On April 3, 2017, Petitioner provided its written
consent to the surrender, 20 TTABVUE, and on July 3, 2017, the Board entered an order
accepting the voluntary surrender and dismissing the petition to cancel without prejudice as
to Registration Nos. 4002506, 4109044 and 4183582. 24 TTABVUE. The Board also struck
the allegations in the amended petition to cancel that referenced those registrations. Id. In
an order dated November 21, 2017, the Board revised the caption of this proceeding to reflect
that Jordan Weisz and Vincent Van Gogh Marketing, LLC were no longer defendants in view
of the surrender of the registrations owned by them, and stating that the cancellation
proceeded against Registration Nos. 3931277, 3941023 4287468, 4319499 owned solely by
defendant Vincent Van Gogh Café LLC (“Respondent”). 30 TTABVUE. On January 29, 2020,
the Board advised that although a Commissioner’s order cancelling Registration Nos.
4002506, 4109044, and 4183582 did not issue as a result of the surrender, the registrations
were cancelled under Section 8, and would remain so. 55 TTABVUE. The order also stated
that the database had been updated to reflect the sole defendant, Vincent Van Gogh Café
LLC. Id. Also during the pendency of the proceeding, Respondent allowed Registration Nos.
4287468 and 43199499 to cancel under Section 8 on September 13, 2019, and November 22,
2019, respectively. On May 28, 2020, the Board entered judgment against Respondent in
connection with these two registrations. 59 TTABVUE.

6 Registration No. 5112569 issued January 3, 2017 based on an application filed March 17,
2016. The name “JOE VAN GOGH” does not identify a living individual.

7 Registration No. 5122111 issued January 17, 2017 based on an application filed on March
17, 2016. The mark consists of a circular design including a depiction of a “drip” emerging
from a triangular wedge at the top of the circle, a depiction of a coffee cup along the bottom
edge of the circle, and containing the words “JOE VAN GOGH”, each word on a different line
in the center; there are several varying horizontal lines under each of the words and along
the bottom edge of the depiction of the coffee cup. Color is not claimed as a feature of the
mark. The name “JOE VAN GOGH” does not identify a living individual.
Cancellation No. 92063316
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Coffee shops in International Class 43.
Petitioner also pleads ownership of North Carolina State registrations for JOE
VAN GOGH for “retail services of coffee, coffee-based beverages, coffee beans and
coffee drinks”; “advertising and business”; “sale of coffee, coffee beans, roasted coffee,
prepared coffee and coffee-based beverages in North Carolina retail stores and to
consumers nationwide via the internet”; “staple foods.”
Petitioner also alleges prior use of the following marks:
JOE VAN GOGH

all for
cafe services; maintaining an online blog regarding coffee
roasting and farming, international travel, and community
news and events; roasting coffee beans; retail store services
featuring prepared coffee, tea, and milk beverages and
baked goods; retail services featuring coffee, tea, coffee
brewers, filters, presses, and cups; online retail services
featuring coffee, tea, coffee brewers, filters, presses, and
cups; coffee club membership services; gift cards; beverages
including coffee, tea and milk beverages; roasted coffee
beans; coffee cups; clothing.
Respondent filed an answer admitting certain allegations in the amended petition
to cancel but denying or effectively denying the salient allegations as to likelihood of
confusion, false suggestion of a connection and fraud.
Cancellation No. 92063316
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Both Petitioner and Respondent filed briefs; Petitioner also filed a reply brief.
During its trial period, Respondent did not submit testimony or any evidence.8
However, even though Respondent has filed no testimony or evidence, Petitioner, as
plaintiff in this proceeding, must nonetheless prove its entitlement to a statutory
cause of action and its likelihood of confusion and nonuse claims by a preponderance
of the evidence. Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d
102, 113 USPQ 2d 1307, 1309 (Fed. Cir. 1989). The standard of proof for a fraud claim
is clear and convincing evidence. Standard Knitting Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917, 1926 (TTAB 2006).
I. Unpleaded Nonuse Claim
In its brief, Petitioner argues, in the alternative, that in the event that intent to
deceive is not found in connection with the fraud claim, the Board should find the
involved registrations void ab initio because of nonuse in connection with all of the
identified goods as of the filing dates of the statements of use.9
However, such a claim was not pleaded, and we find this issue was not tried by
implied consent. Petitioner did not give any indication to Respondent that a nonuse

8 On February 11, 2020, while proceedings were suspended, Respondent filed a document
titled “defense” that had no sworn statements or evidence attached. 58 TTABVUE. The Board
advised Respondent that evidence must be filed during its testimony period and to the extent
this filing constituted a brief on the case it was premature. 59 TTABVUE. The Board gave
this filing no consideration. Id.
9 We note that commencement of a cancellation proceeding involving a registration within
five years of the date of registration tolls Trademark Act Section 14 for the purpose of adding
claims against the registration during the pendency of the Board proceeding. See Ashland
Licensing & Intellectual Prop. LLC v. Sunpoint International Group USA Corp., 119 USPQ2d
1125 (TTAB 2016).
Cancellation No. 92063316
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claim as to all of the identified goods was being tried. Petitioner’s requests for
admissions did not seek admissions that Respondent was not using the mark on any
of the identified goods as of the deadline for the statement of use (or as extended).
While Petitioner relies on Respondent’s failure to produce documents as evidence of
nonuse as to all of the goods,10 this position ignores Respondent’s written response
that “Documents are waiting to be received by partners. Still gathering
documentation.”11 Therefore, we do not consider the nonuse claim that Respondent
did not use the mark in connection with any of the goods for either involved
registration.
On the other hand, we do find that a nonuse claim as to some of the goods was
made and tried. In connection with the fraud claim, the amended petition to cancel
alleges non-use by Respondent on some, but not all, of the identified goods in the
involved registrations, and Petitioner’s requests for admissions sought admissions of
nonuse as to some of these goods by Respondent. Therefore, even though not
specifically pleaded separately, Respondent was on notice of a nonuse claim as to
some of the goods. ShutEmDown Sports, Inc. v. Lacy 102 USPQ2d 1036, 1045 (TTAB

10 Petitioner argues that based on Respondent’s discovery responses, there is a presumption
that no documents exist, or that Respondent’s failure to produce documents is effectively an
admission that no documents exist. 60 TTABVUE 32, 35.
11 Although Respondent apparently never produced any documents, as according to Petitioner
it failed to “meaningfully participate in discovery” (60 TTABVUE 12), it does not appear from
the file history of this proceeding that Petitioner filed a motion to compel or other discovery
motion whereby the asserted insufficiency of Respondent’s discovery responses could be
addressed. Thus, the record does not show that Respondent did not produce any documents
in response to a Board order granting a motion to compel nor do Respondent’s written
responses to the document requests state that no responsive documents exist.
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2012) (finding respondent was on notice of nonuse claim based on petitioner alleging
fraud based on nonuse).
Nonuse on some, but not all, of the identified goods as of the deadline (or the
extended deadline) for the underlying applications’ statements of use is not grounds
for voiding the registrations in their entireties, as would result from a successful
fraud claim. See Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696,
1697-98 (TTAB 2006). Rather, nonuse of the involved mark on some of the identified
goods in the involved underlying applications results in partial judgment and deletion
of the goods on which the mark was not used. Id.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the involved registrations. With its amended petition
to cancel, Petitioner submitted electronic printouts from the Office’s Trademark
Status and Document Retrieval (TSDR) database showing the status and title of its
pleaded registrations, making them of record. 22 TTABVUE. Trademark 37 C.F.R. §
2.122(d), Rule 2.122(d). In addition, Petitioner introduced a notice of reliance12 on

12 This evidence was filed under the July 19, 2019 trial schedule. 46 TTABVUE. See
Trademark Rule 2.196, 37 C.F.R. § 2.196. Petitioner’s notice of reliance also states its “intent
to rely on all materials previously submitted in this matter. This includes, but is not limited
to, materials submitted with Plaintiff’s Motion for Summary Judgment, which included
JVG’s Pretrial Disclosures, JVG’s selected discovery sent to Defendant, and the Declaration
of Thomas F. Roberts Jr.” Petitioner’s notice of reliance, 50 TTABVUE 2. However, to be to
be considered at final hearing, a copy of the evidence must be properly introduced into the
record during the appropriate trial period. A general and somewhat vague reference to prior
filed papers or documents in a proceeding is insufficient to make these documents of record
for purposes of trial, unless these documents are introduced under notice of reliance, where
appropriate, or by witness testimony. See Levi Strauss & Co. v. R. Joseph Sportswear Inc.,
28 USPQ2d 1464, 1465 n.2 (TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4
Cancellation No. 92063316
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plain copies of its registered marks JOE VAN GOGH and JOE VAN GOGH and
design, articles of incorporation and 2005 annual report of Joe Van Gogh Inc., both
filed with the North Carolina Secretary of State, copies of its North Carolina State
registrations for Joe Van Gogh and Joe Van Gogh and design13, copies of Petitioner’s
discovery requests to Respondent, Respondent’s “partial” and “belated” responses to
Petitioner’s discovery requests, and Petitioner’s initial disclosures14 (50 TTABVUE);
a notice of reliance on the cancellation of Registration Nos. 4287468 and 4319499,
which registrations had been cancelled during the pendency of the proceedings, (53
TTABVUE);15 a notice of reliance stating that Petitioner intends to rely on all
previously filed trial materials in this matter, including materials submitted under
previous trial calendars and/or scheduling orders (54 TTABVUE);16 and the
declaration testimony of Thomas F. Roberts Jr., President of Joe Van Gogh Inc.
(executed August 14, 2018).17

(TTAB 1983). See also Boi Na Braza, LLC v. Terra Sul Corp.,110 USPQ2d 1386, 1389 n.11
(TTAB 2014) (documents filed in a proceeding are not automatically of record for trial). In
any event, in its brief, Petitioner only references and relies on the exhibits submitted with
the notice of reliance at 50 TTABVUE as well as the declaration and exhibits submitted with
the motion for summary judgment and resubmitted as trial testimony at 49 TTABVUE.
13 This state registration is unpleaded.
14 Reliance on one’s own initial disclosures is improper and we have not considered them.
Trademark Rule 2.120(k)(5) 37 C.F.R. § 2.120(k)(5). Regardless, even if we had considered
them, they were entitled to little, if any, probative weight.
15 See n.3. This filing was made on December 13, 2019, under a reset trial schedule, see 52
TTABVUE.
16 This filing was made on December 16, 2019 the last day of the testimony period as reset.
See Trademark Rule 2.196, 37 C.F.R. § 2.196. 52 TTABVUE.
17 This testimony was filed under the July 19, 2019 trial schedule. 46 TTABVUE. See
Trademark Rule 2.196, 37 C.F.R. § 2.196.
Cancellation No. 92063316
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III. Evidentiary issues
Respondent submitted evidence with its trial brief. Evidence submitted outside of
the trial periods—including that attached to briefs—is untimely, and will not be
considered. Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB
2008). See also Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB
2020) (‘“A brief may not be used as a vehicle for the introduction of evidence.’ ... The
Board will not consider evidence and other evidentiary materials attached to the
briefs unless they were properly made of record during the time assigned for taking
testimony.”). Accordingly, we have given no consideration to the evidence submitted
by Respondent with its trial brief.
As indicated, Petitioner submitted the declaration of Thomas F. Roberts Jr. as its
testimony. The declaration was executed and submitted on August 14, 2018 in
connection with Petitioner’s motion for summary judgment.18 Thus, this declaration
was executed a little more than a year prior to the opening of Petitioner’s testimony
period.19 46 TTABVUE (reset trial schedule).
“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

18 The testimonial declaration is nearly identical to the declaration submitted on summary
judgment, 32 TTABVUE, and identifies the same date of execution, August 14, 2018, except
the summary judgment declaration includes an additional verification. 49 TTABVUE 8-9.
The notice of filing testimonial declaration also references the August 14, 2018 date as the
date of the declaration.
19 In the order denying summary judgment, the parties were advised that testimony and
evidence submitted in connection with the motion for summary judgment must be properly
introduced at trial. 38 TTABVUE 9 n.14.
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granted by the Board, or by order of the Board.” Trademark Rule 2.121(a)(1), 37
C.F.R. § 2.121(a). Therefore, “[i]n order to properly make an affidavit or declaration
of record as trial testimony, absent a stipulation or Board order, the affidavit or
declaration must be executed during the assigned testimony period, unless submitted
as an exhibit to other testimony and the affirmed therein.” Robinson v. Hot Grabba
Leaf, LLC, 2019 USPQ2d 149089, at * 3-4 (TTAB 2019), cancellation order vacated
on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019). See also Levi
Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n. 2 (TTAB 1993)
(materials submitted in connection with a summary judgment motion of record “only
to the extent that particular papers were made of record in accordance with the
Trademark Rules of Practice”).20
Where parties improperly introduce or submit non-conforming evidence, such
evidence “will not be considered even if the adverse party does not specifically object
to it, as long as the adverse party does not specifically treat it as of record such that
we can say it has been stipulated into the record.” Calypso Tech., Inc.. v. Calypso
Capital Mgmt., 100 USPQ2d 1213, 1216 (TTAB 2011) (Board did not consider witness
affidavit submitted under notice of reliance that had been previously submitted in
connection with a motion for summary judgment even though opposing party did not
object because the opposing party did not treat the affidavit as being of record); 7-

20 To properly introduce summary judgment declaration testimony and evidence, “[p]arties
may submit such declarations under a timely taken affidavit or declaration attesting to the
continued accuracy of the information residing therein.” Robinson v. Hot Grabba Leaf, 2019
USPQ2d 149089 at *4 n.22.
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Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 717 n. 3 (TTAB 2007) (the Board did not
interpret applicant to have stipulated to its summary judgment opposition brief,
declarations and exhibits as being of record because although applicant did not object,
he did not in any way treat the submissions to be of record). Cf. Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423, 1425 n.8 (TTAB 1993)
(Board considered declaration to be of record because although the parties did not
stipulate to taking testimony by declaration, the opposing party did not object and in
its brief, treated the declaration as properly of record).
The Roberts declaration testimony was not stipulated into the record by the
parties nor was it submitted via other testimony and the accuracy of the testimony
affirmed by the witness. Although Respondent did not object to the declaration
testimony, it did not in any way treat the Roberts declaration as being of record.21
Under these circumstances, there is no basis upon which we can interpret Respondent
as having stipulated to the Roberts declaration being of record. Therefore, we do not
consider the Roberts declaration. Robinson v. Hot Grabba Leaf, 2019 USPQ2d 149089
at *4 n.23 (summary judgment declaration that was not submitted via other
testimony and was not affirmed was not considered by the Board).

21 We do not consider Respondent’s mention (61 TTABVUE 3) of Petitioner’s argument in
Petitioner’s brief at pp. 21-22 (60 TTABVUE 26-27) to be a reference to the Roberts
declaration.
Cancellation No. 92063316
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To the extent the exhibits attached to the Roberts declaration could have been
submitted under a notice of reliance and are self-authenticating, we will consider
them.22 See Calypso Tech., 100 USPQ2d at 1216-1217.
The Roberts declaration also included as an exhibit the declaration of Russhe
Riemer offered in a federal civil action. It is unclear on its face whether this testimony
was submitted in a prior civil action involving the parties, but in any event, the
declaration is not trial testimony under Trademark Rule 2.122(f), 37 C.F.R. § 2.122(f),
and there is no order from the Board approving its use. Therefore, we have given this
declaration no consideration.
IV. Statutory Entitlement to a Cause of Action23
In every inter partes case, the plaintiff must establish its statutory entitlement to
bring an opposition or cancellation proceeding. To establish entitlement to a statutory
cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of
interests protected by the statute and (ii) proximate causation. Corcamore, LLC v.
SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020).
Demonstrating a real interest in cancelling the registration of a mark satisfies the

22 In addition to its separate notice of filing the Roberts declaration, Petitioner indicated its
reliance on the Roberts declaration and accompanying exhibits in the notice of reliance, 50
TTABVUE.
23 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.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), 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 applicable. See Spanishtown Enters., Inc. v. Transcend Resources,
Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020).
Cancellation No. 92063316
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zone-of-interests requirement, and demonstrating a reasonable belief in damage by
the registration of a mark demonstrates damage proximately caused by registration
of the mark. Id. at 7-8.
With its amended petition to cancel, 22 TTABVUE, Petitioner submitted copies of
its pleaded registrations from the TSDR database showing status and title, making
them of record. 22 TTABVUE 23-29; Trademark Rule 2.122(d)(1), 37 C.F.R.
§ 2.122(d)(1). The pleaded registrations establish Petitioner’s direct commercial
interest. See Herbko Int’l v. Kappa Books, 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed.
Cir. 2002) (“In most settings, a direct commercial interest satisfies the ‘real interest’
test”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (pleaded registrations “suffice to establish …direct commercial interest”; a
belief in likely damage can be shown by establishing a direct commercial interest).
Therefore, Petitioner has shown that it has demonstrated an interest falling
within the zone of interests protected by the statute and a reasonable basis for its
belief of damage proximately caused by registration of the mark. Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Cancellation No. 92063316
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Accordingly, we find Petitioner has established its statutory entitlement to a cause
of action. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
V. Likelihood of Confusion
To prevail on the likelihood of confusion ground under Section 2(d) of the
Trademark Act, it is Petitioner’s burden to prove by a preponderance of the evidence
both priority of use and likelihood of confusion. Cunningham v. Laser Golf Corp., 55
USPQ2d at 1848; Kohler Co. v. Baldwin Hardware Corporation, 82 USPQ2d 1100,
1105 & 1108 (TTAB 2007).
A. Priority24
In a cancellation proceeding in which both parties own registrations, the
petitioner must prove priority of use. See Brewski Beer Co. v. Brewski Bros., Inc., 47
USPQ2d 1281, 1284 (TTAB 1998). Thus, in order to meet the first of its burdens of
proof on the likelihood of confusion claim, Petitioner must be able to show that it has
used its marks prior to Respondent’s priority dates. In connection with common law
trademark use, Petitioner must show that its common law trademarks are
distinctive, inherently or otherwise. See Otto Roth & Co. v. Universal Foods Corp.,

24 Petitioner argues in its brief that its priority is “uncontested.” 60 TTABVUE 24. However,
Respondent denied Petitioner’s priority in its answer. Petitioner also submits in its reply
brief that priority is conceded because Respondent did not specifically address priority in its
brief. 63 TTABVUE 6. However, in its brief, Respondent stated that “The Plaintiff claimed
that it had a first use on March 11, 2004 which has yet to be proven. … It is difficult for the
Defendant to discern the correct date of first use as claimed by the Plaintiff.” Respondent’s
brief, 61 TTABVUE 4. This statement is a sufficient challenge to Petitioner’s evidence of
priority. In any event, even if a defendant in an inter partes proceeding files neither evidence
nor a trial brief, the plaintiff still bears the burden of establishing the elements of its claim.
Cancellation No. 92063316
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640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981). We find no issue as to the
distinctiveness of Petitioner’s alleged common law marks, and Respondent has not
claimed otherwise.25
In proving priority of use, the parties may rely, as evidence of use of their marks,
upon the filing dates of their applications for their subsequently issued registrations.
M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010). However, we note
initially that Petitioner may not rely on its pleaded registrations’ March 17, 2016
filing dates for priority because these dates are subsequent to the March 24, 200726
and April 28, 200727 filing dates of the applications which matured into Respondent's
involved registrations. Respondent relies on its constructive use dates of these
applications as its priority dates and not any earlier use dates.
Therefore, Petitioner must rely on its common law use of JOE VAN GOGH and
JOE VAN GOGH composite word and design marks as trademarks to prove priority.28
Petitioner must prove that it has a proprietary interest in its alleged marks and that
the interest was obtained prior to the filing dates of Respondent’s applications that
matured into registrations. L.& J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1965
(TTAB 2007). In a case involving common-law rights, “the decision as to priority is

25 In its brief, Respondent states that it agrees that “Joe Van Gogh has a distinctive mark
which is unique and Original.” Respondent’s brief, 61 TTABVUE 5.
26 Registration No. 3941023 for the mark VINCENT VAN GOGH PREMIUM COFFEE.
27 Registration No. 3931277 for the mark VINCENT VAN GOGH.
28 Petitioner also argues in its brief that it has common law rights in the shortened term VAN
GOGH, referencing testimony in the excluded Roberts declaration. We note that Petitioner’s
use of the shortened term VAN GOGH is unpleaded.
Cancellation No. 92063316
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made in accordance with the preponderance of the evidence.” Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
1987). Here, Petitioner asserts that its use of its JOE VAN GOGH and composite JOE
VAN GOGH and design marks are prior to Respondent’s 2007 constructive use dates.
Bearing in mind that we must “look at the evidence as a whole, as if each piece of
evidence were part of a puzzle which, when fitted together, establishes prior use,” W.
Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir.
1994), we shall discuss Petitioner's documentary evidence. As indicated, we do not
consider the Roberts declaration or the Riemer declaration. We consider any
admissions by Respondent in its answer and any admissions to Petitioner’s requests
for admissions that may bear on the issue of priority.
The record includes Petitioner’s pleaded registrations for JOE VAN GOGH and
, 22 TTABVUE 22-35; however, the allegation of the dates of use listed
in those registrations is not evidence of use. Trademark Rule 2.122(b)(2) (“The
allegation in . . . a registration [ ] of a date of use is not evidence on behalf of the . . .
registrant. . . .”). The record also includes state trademark registration certificates
from the State of North Carolina for JOE VAN GOGH marks. 50 TTABVUE 15-17.
However, the state registrations are not sufficient to establish use. See Faultless
Starch Co. v. Sales Producers Assocs., Inc., 530 F.2d 1400, 189 USPQ 141, 142 n.2
(CCPA 1976) (state registrations alone do not establish use); The State Historical
Cancellation No. 92063316
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Society of Wisconsin v. Ringling Bros.-Barnum & Bailey Combined Shows, Inc., 190
USPQ 25, 26 n.2 (TTAB 1976) (“Furthermore, it has frequently been held that state
registrations are incompetent to establish that a mark is or has been in use.”); Old
Dutch Foods, Inc. v. Old Dutch Country House, Inc., 180 USPQ 659, 660 n.6 (TTAB
1973) (“It is well settled that state registrations are without evidentiary value to
establish that a mark is, or has been, in use.”).
Petitioner also submitted its articles of incorporation and first annual report, both
filed with the Secretary of State of North Carolina. 50 TTABVUE 10-13. However,
“[i]t is well established that mere incorporation, in itself, cannot establish priority of
use of a trademark or trade name.” Sperry Rand Corp. v. Select Beauty Brands, Inc.,
184 USPQ. 767 (TTAB 1974) citing The Geo. Washington Mint, Inc. v. The
Washington Mint, Inc., 176 USPQ 251 (S.D.N.Y. 1972), and cases cited therein; and
McNeil v. Mini Mansions, Inc., 178 USPQ 312 (TTAB 1973). See also Liqwacon Corp.
v. Browning-Ferris Indus., 203 USPQ 305, 316 (TTAB 1979) (certificate from the
State of Pennsylvania attesting to opposer’s change of name insufficient to establish
open and public use of corporate name, in the absence of evidence of a going business
at that time). We further note that none of these records reference or show trademark
or service mark use of JOE VAN GOGH or composite JOE VAN GOGH and design
marks, and to the extent that these documents may be considered to show Joe Van
Gogh Inc. trade name use, any claim of priority based on trade name use is unpleaded,
and has not been tried by implied consent.
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The Roberts declaration includes exhibits that are self-authenticating Internet
printouts showing the URL and date. These documents are web pages from the
joevangogh.com website dated August 14, 2018 (2018 copyright date) and website
printouts from the joevangogh.com website retrieved from the Internet Archive’s
Wayback Machine: January 16, 2007 (2006 copyright date), January 17, 2007 (no
copyright date), January 18, 2007 (no copyright date), October 25, 2011 (2006-2010
copyright date), October 27, 2011 (2011 copyright date), October 27, 2011 (2006, 2008,
2009 copyright date), April 20, 2013 (2013 copyright date) and March 29, 2015 (2015
copyright date), 50 TTABVUE 24-40. While three of the exhibits show 2006 copyright
dates, these copyright notices are insufficient to establish that the documents were
actually in use. Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825,
1834 n.75 (TTAB 2013).
Respondent has not accepted as fact Petitioner’s use on the archived 2007
webpages,29 and as we do not consider the Roberts declaration, there is no

29 In its unverified response to Petitioner’s interrogatory no. 6 which sought “all facts relating
to Defendant’s first awareness of JVG’s use of JVG’s Marks,” Respondent stated:
RESPONSE: I was doing a search on the USPTO website while
I was ending a legal action with Luctor International and found
the company Joe Van Gogh Inc. with a new application entered
within the last week of March 2008. I was aware of JVG’s Mark
at the same time with a Joe Van Gogh word Mark submission.
After researching the company of JVG online, I found that there
was the same company still using the name “Cup A Joe” and
selling “Cup A Joe” related coffee goods and products with a
website of three café locations with the name “Cup A Joe”. I had
seen no advertising or use in commerce/sales listed on their
website or attached to their “Cup A Joe” locations using the
trademark name “Joe Van Gogh” at this time. With my
knowledge they were in the concept & creative design stage and
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corroborating testimony to support the authenticity and accuracy as to the date of
any of the Wayback machine captures or the 2018 website printout. Spiritline Cruises
LLC v. Tour Mgt. Servs., Inc., 2020 USPQ2d 48324 at *4 (TTAB 2020); WeaponX
Performance Products Ltd. v. Weapon X Motorsports, 126 USPQ2d 1034, 1041 (TTAB
2018) (webpages submitted under notice of reliance generally cannot be used to
demonstrate priority without corroborating testimony). Thus, the webpages are not
admissible for the truth of the matters herein but are probative for what they show
on their face. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1040 (TTAB 2010)
(“[Internet printouts] are admissible only to show what has been printed, not the
truth of what has been printed.”). Therefore, we find the Internet webpages do not
establish Petitioner’s prior use.
As to admissions in Respondent’s amended answer, Respondent has admitted that
Petitioner is the owner of registered and common law marks predominantly
comprised of VAN GOGH; that Petitioner owns registrations and pending trademark
applications for VAN GOGH marks each which include the term VAN GOGH or a
variant; that Petitioner owns North Carolina State registrations for marks which
include the term VAN GOGH or a variant; and that two registrations were issued to
Petitioner by the USPTO.30 (31 TTABVUE, Answer ¶¶ 1, 4, 5, 18).

moving from one entity “Cup A Joe” to another entity “Joe Van
Gogh.”
Petitioner’s notice of reliance, 50 TTABVUE 28-29.

30 In its answer to the amended petition to cancel, Respondent included a defense that was
an amplification of its denials of likelihood of confusion, stating “the issue of priority of use
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Although there are general admissions in the answers as to Petitioner’s use of
marks comprised of VAN GOGH and variants, there are no admissions by
Respondent as to the particular marks used by Petitioner such as JOE VAN GOGH
and the composite JOE VAN GOGH and design because the marks are not specifically
identified in these particular allegations.
As to Respondent’s responses to Petitioner’s requests for admissions, the
responses were untimely served, and Respondent did not request withdrawal or
amendment of the admissions. Petitioner points out that the requests are deemed
admitted under the Federal Rules, Fed. R. Civ. P. 36(a)(3), 60 TTABVUE 32, also
referencing the Board’s same observations in the order on summary judgment, 38
TTABVUE 5-6 n.12. We note that many of the admissions (nos. 2-16; 22-34, 50
TTABVUE 31-36) relate to whether Respondent has used the involved marks on any
goods or certain goods prior to March 11, 2004, (earlier than its constructive use
dates) or prior to its alleged use in commerce dates of December 20, 2010
(Registration No. 3941023) or January 5, 2011 (Registration No. 3931277).
Respondent also admitted Petitioner’s request for admission no. 1 that sought an
admission that “Defendant’s use of any of Defendant’s Marks does not precede any of
JVG’s use of JVG’s Marks.” Petitioner’s notice of reliance, 50 TTABVUE 31. This
request sought an admission related to Respondent’s actual use of its marks. As
already stated, Respondent relies on its constructive use dates (i.e., application filing

made by the Petitioner is being contested by the remaining Registrant.” Answer, 31
TTABVUE 4.
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dates), and not on its actual use dates since its actual use commenced after those
filing dates. We also note that there are no admissions as to Petitioner’s specific
marks (which are referenced as JVG’s marks in the requests), nor as to specific dates
for Petitioner’s prior use, nor as to Petitioner’s use prior to the filing dates of
Respondent’s underlying applications (constructive use dates).
Also submitted with a URL and date with the Roberts declaration is a printout of
the Whois page for the joevangogh.com website showing a 2004 creation date. 49
TTABVUE 21-23. The mere registration of a term as a domain name does not
establish any trademark rights. Brookfield Communications Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999)
(“Registration with Network Solutions, however, does not in itself constitute ‘use’ for
purposes of acquiring trademark priority.”). Furthermore, the mere use of a domain
name, only as a domain name, likewise does not establish trademark use. See
Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956, 44 USPQ2d
1865, 1871 (C.D. Cal. 1997). (“When a domain name is used only to indicate an
address on the Internet, the domain name is not functioning as a trademark.”). See
also United Global Media Grp., Inc., v. Tseng, 112 USPQ2d 1039, 1046 (TTAB 2014)
(invoice for domain name does not show trademark use); In re Eilberg, 49 USPQ2d
1955, 1957 (TTAB 1998) (while a domain name may attain trademark status, its use
as an address does not support trademark use.). Therefore, the Whois webpages do
not establish Petitioner’s prior use.
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Considering all of the evidence as a whole, we find that Petitioner has failed to
prove its priority by a preponderance of the evidence. Having failed to establish
priority, Petitioner cannot prevail on its likelihood of confusion claim. Moke Am. LLC
v. Moke USA, LLC, 2020 USPQ2d 10400, at *9-10 (TTAB 2020) (“We need not reach
the merits of the likelihood of confusion claim because without proof of priority,
Opposer cannot prevail.”).
VI. Fraud and Nonuse Claims
We now turn to the fraud and nonuse claims.
Fraud in procuring a trademark registration occurs when an applicant knowingly
makes false, material representations of fact in connection with its application with
an intent to deceive the USPTO. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
1938, 1941 (Fed. Cir. 2009) (quoting Torres v. Cantine Torresella S.r.l., 808 F.2d 46,
48, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986)). Statements regarding the use of the mark
on goods and services are material to issuance and maintenance of a registration
covering such goods and services. Hachette Filipacchi Presse v. Elle Belle, LLC, 85
USPQ2d 1090, 1093 (TTAB 2007).
A party alleging fraud in the procurement of a registration bears the heavy burden
of proving fraud with clear and convincing evidence. Bose, 91 USPQ2d at 1939
(quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)).
Subjective intent to deceive is an indispensable element in the analysis. Id. at 1941.
“[B]ecause direct evidence of deceptive intent is rarely available, such intent can be
inferred from indirect and circumstantial evidence. But such evidence must still be
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clear and convincing, and inferences drawn from lesser evidence cannot satisfy the
deceptive intent requirement.” Id. (quoting Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 88 USPQ2d 1001, 1007 (Fed. Cir. 2008)).
Petitioner’s allegations in the amended petition to cancel are that:
As of the date of filing the applications and/or the
respective statement of use, [Respondent] had not used the
marks sought to be registered in connection with any of the
goods and services listed in the applications that matured
into the Fraudulent Registrations, other than those
itemized hereinabove. To be even clearer, and identified
specifically by Fraudulent Registration, Registrants had
not used the applied for marks in connection with at least
the below-listed goods and services as of the pertinent
dates:
i. Registration No. 3931277, for VINCENT VAN GOGH
(registered in standard character form) was not in use in
connection with:
flavourings of tea; lime tea; mixes in the nature of
concentrates, syrups or powders used in the preparation of
tea based beverages; oolong tea; sage tea; tea of parched
powder of barley with husk (mugi-cha); tea of salty kelp
powder (kombu-cha); tea pods; theine-free tea sweetened
with sweeteners.
ii. Registration No. 3941023, for VINCENT VAN GOGH
PREMIUM COFFEE (registered in standard character
form), was not in use in connection with:
caffeine-free coffee; chicory based coffee substitute; coffee
flavored syrup used in making food beverages; coffee pods;
coffee substitutes; instant coffee; sugar-coated coffee beans.
Amended petition to cancel, ¶ 32, 22 TTABVUE.
A plaintiff alleging nonuse (or fraud based on nonuse) pursuant to Section 1 of the
Trademark Act, 15 U.S.C. § 1051, must plead and prove that there was no use in
commerce prior to the filing of the use-based application or prior to the deadline for
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filing the statement of use (or the deadline as extended).31 Embarcadero Techs., Inc.
v. Delphix Corp., 117 USPQ2d 1518, 1524 (TTAB 2016) (“actual filing of a statement
of use does not cut off the deadline for meeting the requirements for a statement of
use” so the focus in a nonuse claim is whether the mark was in use as of the deadline
to file a statement of use). Petitioner’s allegations are not a sufficient pleading of
nonuse (or fraud based on nonuse) because they do not allege that the marks were
not in use on the goods as of the deadline for filing the statement of use (Registration
No. 3941023) or as of the extended deadline for filing the statement of use
(Registration No. 3931277). See Ashland Licensing & Intellectual Property LLC v.
Sunpoint Int’l Grp. USA Corp., 119 USPQ2d 1125, 1131 (TTAB 2016) (any legally
sufficient nonuse claim must plead that respondent failed to use its mark in
commerce by the expiration of the time for filing a statement of use). However, we
find that these issues were tried by implied consent.
Therefore, to prove nonuse or the nonuse element of the fraud claim for
Registration No. 3931277, Petitioner must establish that Respondent was not using
the VINCENT VAN GOGH mark on certain identified goods by the extended
statement of use deadline of July 13, 2011.32 For Registration No. 3941023, Petitioner

31 The nonuse and fraud claims are based on overlapping factual allegations such that
Petitioner cannot prevail upon its fraud claims unless is first prevails on its nonuse claims.
That is, to prevail on the fraud claims, Petitioner must establish both nonuse and deceptive
intent.
32 The Notice of Allowance issued January 13, 2009. Prior to filing its statement of use,
Respondent obtained three extensions of time to file its statement of use which extended the
deadline to January 13, 2011. Respondent filed its statement of use on January 11, 2011
along with a request for an extension of time. The Office approved the extension request on
January 14, 2011, which extended the deadline to July 13, 2011.
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must establish that Respondent was not using the VINCENT VAN GOGH
PREMIUM COFFEE mark on certain identified goods by the statement of use
deadline of January 13, 2011.33
Petitioner relies on the lack of specimens for all of the listed goods in the
underlying applications of the involved registrations.34 In general, the Office does not
inquire as to the use of the mark on each good listed in a single class and only requires
specimens of use as to one of the listed goods in the class, relying on an applicant’s
declaration with regard to use on the other listed goods. See Trademark Rule 2.56(a),
37 C.F.R. § 2.56(a); TMEP Sections 806.01(a) and 904.01(a) (October 2018).
Therefore, the lack of specimens for all the listed goods is not probative.
Petitioner relies on Respondent’s failure to produce documents in connection with
discovery responses as part of its proof. However, as stated above, the responses that
Petitioner relies on are not probative of nonuse as to the particular goods at issue as
the responses do not state no documents exist, and Petitioner never challenged the
sufficiency of the responses. 50 TTABVUE 29-31. Petitioner also relies on
Respondent’s responses to Petitioner’s requests for admissions.
Respondent has admitted, for Registration No. 3931277 (VINCENT VAN GOGH),
that it was not offering in commerce all of the goods claimed in the registration before

33 The Notice of Allowance issued January 13, 2009. Respondent obtained three extensions of
time to file its statement of use which extended the deadline to January 13, 2011. Respondent
filed its statement of use on January 3, 2011, prior to the January 13, 2011 deadline.
34 Petitioner also appears to criticize the sufficiency of the submitted specimens. 60
TTABVUE 15-17, 35. However, that is an examination issue and not a basis for claiming
fraud in an inter partes case. See e.g., General Mills Inc. v. Health Valley Foods, 24 USPQ2d
1270, 1273 n. 6 (TTAB 1992).
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January 5, 2011 (with an alleged date of first use in commerce of January 5, 2011);35
and that it was not offering in commerce before January 5, 2011 tea of salty kelp
powder (kombu-cah), beverages made of tea, flavorings of tea, fruit teas, herb tea,
iced tea, Japanese green tea, lime tea, syrups or powders used in the preparation of
tea-based beverages, sage tea; and that the mark was not used for any kind of
beverage made of tea or any kind of tea before January 5, 2011. Respondent’s
responses to Petitioner’s requests for admissions nos. 22-32, 51-52, Petitioner’s notice
of reliance, 50 TTABVUE 33-37. Respondent also admitted that “Defendant has never
offered Syrups or Powders used in the preparation of tea-based beverages in
commerce under Defendant’s mark VINCENT VAN GOGH (U.S. Trademark Reg. No.
3931277).” Petitioner’s notice of reliance, requests for admission no. 53, 50 TTABVUE
37.
Respondent admitted, for Registration No. 3941023 (VINCENT VAN GOGH
PREMIUM COFFEE), that it was not offering in commerce all of the goods claimed
in the registration before December 20, 2010 (the alleged date of first use in
commerce) and that it was not offering in commerce beverages made of coffee, coffee
flavored syrup, coffee pods, coffee substitutes, instant coffee, and sugar-coated coffee

35 Petitioner has pointed out in its brief that Respondent’s alleged date of first use is January
5, 2010, which is reflected in the Office’s electronic database. 60 TTABVUE 16. However, this
appears to be a typographical error, as the statement of use filed on January 5, 2011 alleged
January 5, 2011 as the date of first use and first use in commerce. See January 5, 2011
statement of use. Cf. Duffy-Mott Company, Inc. v. Borden, Inc. 201 USPQ 846, 847 (TTAB
1978) (Board may take judicial notice of the correct facts to the extent they can be obtained
from Office records, when there is an error in Office records).
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before December 20, 2010.36 Respondent’s responses to Petitioner’s requests for
admissions nos. 33-34, Petitioner’s notice of reliance, 50 TTABVUE 35. Respondent
also admitted that it has never offered instant coffee in commerce as of December 20,
2010. Petitioner’s notice of reliance, 50 TTABVUE 37 (requests for admission nos. 54-
55).37
However, except for “syrups or powders used in the preparation of tea-based
beverages,” these admissions do not clearly establish that Respondent was not using
the mark in commerce with the goods at issue as of the deadline for the statement of
use as extended for Registration No. 3931277, or that Respondent was not using the
mark in commerce in connection with the goods at issue as of the deadline for the
statement of use for Registration No. 3941023.38 At most, these admissions establish
that there was no use in commerce of the mark on certain of the identified goods
before or on the alleged use in commerce date for each registration.

36 Petitioner argues that Respondent alleged a 2010 use in commerce date but admitted that
it had not used the mark on the goods until January 5, 2011, referencing the admissions for
the VINCENT VAN GOGH mark. Petitioner’s brief, 60 TTABVUE 17. However, for the
admissions relating to the VINCENT VAN GOGH PREMIUM COFFEE mark, Respondent’s
responses are consistent with the alleged first use and first use in commerce date of December
20, 2010 in the statement of use.
37 Both seeking an admission that Respondent “never offered Instant Coffee in commerce
under Defendant’s mark VINCENT VAN GOGH PREMIUM COFFEE (U.S. Trademark Reg.
No. 3941023), as of December 20, 2010.” Petitioner’s notice of reliance, 50 TTABVUE 37.
Requests nos. 54 and 55 appear to be duplicative.
38 We note that even if these admissions establish that Respondent was not using the goods
as of the alleged first use in commerce dates, a misstatement as to the date of first use in
commerce does not constitute fraud so long as the mark is in use by the deadline for filing
the statement of use or as extended. Cf. Western Worldwide Enterprises Group Inc. v.
Qinqdao Brewery, 17 USPQ2d 1137, 1141 (TTAB 1990) (“The Board repeatedly has held that
the fact that a party has set forth an erroneous date of first use does not constitute fraud
unless, inter alia, there was no valid use of the mark until after the filing of the [Section 1(a)]
application.”).
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By contrast, Respondent’s admission that “Defendant has never offered Syrups or
Powders used in the preparation of tea-based beverages in commerce under
Defendant’s mark VINCENT VAN GOGH (U.S. Trademark Reg. No. 3931277)” is
sufficient to find nonuse as to these particular goods.
Based on the foregoing, we find that Respondent was not using the VINCENT
VAN GOGH mark in commerce as of the deadline for filing the statement of use, as
extended, in connection with “syrups or powders used in the preparation of tea-based
beverages.” But Petitioner has not proven by a preponderance of the evidence that
Respondent was not using the VINCENT VAN GOGH mark in connection with
“flavourings of tea; lime tea; mixes in the nature of concentrates used in the
preparation of tea based beverages; Oolong tea; sage tea; tea of parched powder of
barley with husk (mugi-cha); tea of salty kelp powder (kombu-cha); tea pods; theine-
free tea sweetened with sweeteners.” Nor has Petitioner proven by a preponderance
of the evidence that Respondent was not using the VINCENT VAN GOGH
PREMIUM COFFEE mark in connection with “caffeine-free coffee; chicory based
coffee substitute; coffee flavored syrup used in making food beverages; coffee pods;
coffee substitutes; instant coffee; sugar-coated coffee beans.”39
As to the fraud claims, although Petitioner has proven nonuse on “syrups or
powders used in the preparation of tea-based beverages” for Registration No.
3931277, the record does not show any intent to deceive by clear and convincing

39 As a result, Respondent was under no obligation to submit evidence to rebut Petitioner’s
evidence of nonuse.
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evidence. Bose, 91 USPQ2d at 1940 (“[A]bsent the requisite intent to mislead the
PTO, even a material misrepresentation would not qualify as fraud under the
Lanham Act warranting cancellation.”). And as to Registration No. 3941023,
Petitioner did not establish the nonuse element of the fraud claim by clear and
convincing evidence. Therefore, the fraud claims based on nonuse fail.
Decision:
Petitioner’s claim of nonuse of Respondent’s VINCENT VAN GOGH mark,
Registration No. 3931277, is GRANTED in PART with respect to “syrups or powders
used in the preparation of tea-based beverages.” Petitioner’s claim of nonuse of
Respondent’s VINCENT VAN GOGH mark is DENIED in PART with respect to
“flavourings of tea; lime tea; mixes in the nature of concentrates used in the
preparation of tea based beverages; Oolong tea; sage tea; tea of parched powder of
barley with husk (mugi-cha); tea of salty kelp powder (kombu-cha); tea pods; theine-
free tea sweetened with sweeteners.” Respondent’s Registration No. 3931277 will be
cancelled in part by deletion of “syrups or powders used in the preparation of tea-
based beverages.” Petitioner’s claim of nonuse for VINCENT VAN GOGH PREMIUM
COFFEE, Registration No. 3941023, is denied. The petition to cancel is denied on the
likelihood of confusion and fraud grounds for Registration Nos. 3931277 and 3941023.