Madrone Holdings, LLCv.MadFam, Inc.

Trademark Trial and Appeal Board

Aug 25, 2021

92067853 (T.T.A.B. Aug. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Madrone Holdings, LLC
v.
MadFam, Inc.
________

Cancellation No. 92067853
_______

Peter Gluck, Esq. of Patnstr, APC, for Madrone Holdings, LLC.

Shabnam Malek and Amanda Conley of Brand & Branch LLP, for
MadFam, Inc.

Before Zervas, Kuczma and Allard,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On November 21, 2017, Registration No. 5342117 (hereinafter “the ’117
registration”) for the standard character mark MADRONE issued on the Principal
Register to Briscoe Enterprises, LLC for “Cigarette lighters not for land vehicles;
Containers for tobacco and other plant material, namely, tobacco jars; Matches;
Tobacco filters; Tobacco grinders; Cigarette rolling papers” in International Class 34
based on an application filed on September 19, 2016. The ’117 registration claims first
Cancellation No. 92067853
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use and first use in commerce of the mark in June 2017. On June 22, 2020, the Board
recorded an assignment of the registration from Briscoe Enterprises, LLC to Madfam,
Inc. (“Respondent”).1
Madrone Holdings, LLC (“Petitioner”) filed a Petition to Cancel the ’117
registration, alleging use of the mark MADRONE since at least as early as
February 3, 2016 for tobacco products and accessories (¶ 12); “first use ever of the
Madrone mark by Petitioner [on] October 29, 2015 and the first use in commerce of
the Madrone Mark by Petitioner [on] February 03, 2016” (¶ 21); ownership of
application Serial No. 87716503 (filed on December 11, 2017) for the mark
MADRONE for goods which “substantially overlap with the goods described” in the
’177 registration (¶¶ 4, 8); use “since at least as early as Respondent’s stated first use
of the mark depicted in Application No. 87716503” (¶ 7) (with first use on October 29,
2015 and first use in commerce on February 3, 2016 (¶ 21)); likelihood of confusion
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), of Respondent’s
mark with its mark (¶ 28); and non-use in commerce of Respondent’s mark (¶¶ 18-
19).2
In its Answer, Respondent denies Petitioner’s salient allegations and pleads
estoppel and waiver as affirmative defenses. Petitioner also pleads priority as an

1 On November 16, 2020, the Board substituted Respondent as defendant in this proceeding.
(29 TTABVUE).
Citations in this opinion refer to TTABVUE, the Board’s online docketing system. Turdin
v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number
preceding TTABVUE corresponds to the docket entry number, and any numbers following
TTABVUE refer to the page(s) of the docket entry where the cited material appears.
2 Petition to Cancel, 1 TTABVUE 4-7.
Cancellation No. 92067853
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affirmative defense, but this is not a true affirmative defense and is simply a
repetition of its denials.
Both parties filed briefs. By not pursuing its affirmative defenses of estoppel and
waiver in its brief, Respondent has waived them. See Miller v. Miller,
105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am. Wine
Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
A. Evidentiary Record/Evidentiary Issue
Pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the record in this
case consists of the pleadings and the file of the involved registration. The exhibits to
the pleadings are not part of the record.3 See Trademark Rule 2.122(c), 37 C.F.R.
§ 2.122(c); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 317 (2021) and cased cited therein.
Neither party submitted any evidence.
Petitioner argues, however, that the Board’s scheduling order(s) did not provide it
with “an opportunity to conduct discovery nor engage in a trial period, [and] thus
Plaintiff did not have an opportunity to build a record nor collect evidence.”4
The record reflects that after the Board issued its institution order (2 TTABVUE),
Petitioner filed several “Consent Motion for Suspension for Settlement” with revised
trial dates, including dates for Petitioner’s trial period. (5, 7, 10, 12 and 14

3 Petitioner submitted pages for the prosecution file for the registration sought to be
cancelled. This was unnecessary in view of Trademark Rule 2.122(b)(1). In addition,
Petitioner submitted a copy of its pleaded application with its pleading. The application is
not part of the evidentiary record as it was not filed during Petitioner’s testimony period.
4 Reply brief at 3.
Cancellation No. 92067853
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TTABVUE). On August 9, 2019, the Board suspended proceedings until October 9,
2019, with the right of either party to request resumption at any time.
(15 TTABVUE).
On October 11, 2019, Petitioner filed another “Consent Motion for Suspension for
Settlement,” seeking suspension for 60 days and resuming proceedings on December
11, 2019, beginning with the due date for Respondent’s pre-trial disclosure, and
indicating that Petitioner’s trial period had closed. (16 TTABVUE). The Board
approved this motion on the same date, suspending proceedings until December 11,
2019, subject to the right of either party to request resumption at any time. (17
TTABVUE).
On December 10, 2019, Petitioner filed another “Consent Motion for Suspension
for Settlement” which was granted, suspending proceedings for another 60 days,
resuming proceedings on February 9, 2020, again beginning with the due date for
Respondent’s pre-trial disclosures, and indicating that Petitioner’s trial period had
closed. (18 TTABVUE).
A similar pattern with a “Consent Motion for Suspension for Settlement” and
approvals by the Board extended to November 16, 2020, when the Board acted on its
show cause order due to Petitioner’s failure to respond to the Board’s inquiry
regarding Petitioner’s withdrawal of attorney. (24 TTABVUE). In discharging the
show cause order on November 16, 2020 (29 TTABVUE), the Board reset remaining
dates, beginning with the due date for Respondent’s pre-trial disclosure, and
indicating that Petitioner’s trial period had closed. (29 TTABVUE).
Cancellation No. 92067853
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Petitioner’s new attorney filed an appearance on December 14, 2020 (31
TTABVUE), and Petitioner filed its main brief on April 26, 2021 (32 TTABVUE), the
due date identified for Petitioner’s main brief in the November 16, 2020 order.
From this sequence of events, it is apparent that Petitioner allowed its testimony
period to expire on October 10, 2019, before submitting a consented motion to suspend
on October 11, 2019, in which it set forth a consented schedule for resumption of
proceedings beginning with the time for filing Respondent’s pre-trial disclosures. In
so doing, Petitioner consented to the close of its testimony period.
Petitioner filed seven consented motions, without once seeking to re-open its
testimony period. After Petitioner retained a new attorney, its new attorney did
nothing to try to reopen Petitioner’s trial period. In fact, he did not seek to reopen
Petitioner’s testimony period in the four months from filing an appearance (31
TTABVUE) until he filed Petitioner’s main brief (32 TTABVUE).
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration’ and continued use of the registered mark, the burden
of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) ... Accordingly,
in a cancellation … for any … ground, the petitioner bears the burden of proof.
Moreover, the petitioner’s burden is to establish the case for cancellation by a
preponderance of the evidence.” Cerveceria Centroamericana, S.A. v. Cerveceria
India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). Further,
Cancellation No. 92067853
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“[a]ttorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe,
Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005).5
Because Petitioner has not submitted any evidence to support its claims, and
Respondent has not admitted any of Petitioner’s salient allegations, Petitioner’s
claims of priority and likelihood of confusion, and no use in commerce, are denied.
Decision: The Petition to Cancel is denied.

5 Where the plaintiff fails to prosecute its case, the Board may sua sponte enter judgment for
the defendant. See Trademark Rule 2.132(a), 37 C.F.R. § 2.132(a), (“[i]f the time for taking
testimony by any party in the position of plaintiff has expired and it is clear to the Board
from the proceeding record that such party has not taken testimony or offered any other
evidence, the Board may grant judgment for the defendant.”).