Marco Polo Hotel Manage-ment, Ltd.v.Gemini, Inc.

Trademark Trial and Appeal Board

Jun 29, 2001

No. 92024018 (T.T.A.B. Jun. 29, 2001)

06/29/01
Paper No. 51
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Marco Polo Hotels Management, Ltd.
v.
Gemini, Inc., d/b/a Lady Luck Casino
_____
Cancellation No. 24,018
_____
Virginia R. Richard of Winston & Strawn for
Marco Polo Hotels Management, Ltd.
Donald C. Casey for Gemini, Inc., d/b/a Lady Luck Casino.
_____
Before Hairston, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Marco Polo Hotels Management, Ltd. has filed a petition
to cancel Registration No. 1,726,344 for the mark MARCO
POLO’S for “casino services” in Class 41 and “restaurant,
bar and hotel services” in Class 42.1
In the petition to cancel, as originally filed,
petitioner alleges as grounds for cancellation that, since
1 Registration No. 1,726,344, issued October 20, 1992, Section 8
affidavit accepted.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 24,018
2
at least early 1980, it has operated hotels and restaurants
under the name and mark MARCO POLO in Hong Kong and
Singapore; that its mark has been extensively featured in
advertising and promotional materials circulated throughout
the United States and its mark has a valuable reputation in
the United States; that upon information and belief,
respondent has not used the mark MARCO POLO’S for a period
of two consecutive years prior to the filing of the petition
and has discontinued use with the intent not to resume use;
that the registration should also be cancelled on the ground
that it was fraudulently procured in that the application
falsely stated a first use date prior to any date of actual
use; and that the continued registration of respondent’s
mark will interfere with petitioner’s ability to obtain
registration of its mark.
Respondent, in its answer, denied most of the
allegations of the petition, although admitting that its
mark MARCO POLO’S had not been used for a period of two
years prior to the institution of the cancellation
proceeding in the Lady Luck Casino and Hotel in Las Vegas,
Nevada.
Petitioner later filed an amended petition, setting
forth an additional ground for cancellation. By this
additional claim, petitioner seeks partial cancellation of
the registration with respect to hotel, casino and bar
Cancellation No. 24,018
3
services on the ground of nonuse as of the date of the
filing of the application for registration of the mark, as
well as nonuse up to the date of filing of the petition for
cancellation. Respondent denied all the salient allegations
of the amended petition.
The Record
The record consists of the pleadings, the registration
file, and the materials made of record by means of
petitioner’s notice of reliance.2 Only petitioner has filed
a brief. An oral hearing was not requested.
Prior History of the Case
The case has been the subject of motions for summary
judgment at two different points in the prosecution, each of
which has been dispositive of certain grounds set forth in
the petition for cancellation.
The first cross-motions for summary judgment consisted
of petitioner’s and respondent’s motions directed to the
ground of abandonment and respondent’s cross-motion directed
both to petitioner’s standing and to the ground of
fraudulent procurement of the registration.
The Board, in its decision issued March 27, 1998,
granted summary judgment to petitioner on the issue of
2 Respondent also filed a notice of reliance during its testimony
period. Petitioner filed a motion to strike the two exhibits
attached to the notice, on the ground that they did not comply
with the procedural requirements of Trademark Rule 2.122(e). The
Cancellation No. 24,018
4
standing, holding that petitioner had established that it
was a competitor of respondent and as such had standing to
bring this action. The Board granted summary judgment to
respondent on the fraud claim, thus eliminating this ground
from trial.
Turning to the issue of abandonment, the Board denied
the motions of each party for judgment on this ground. The
Board did find that it was “undisputed fact” that “there was
no use of the registered mark in connection with the claimed
services from the Fall of 1993 until December of 1995.”3
(Decision, p. 10). The Board went on, however, to examine
the evidence which respondent had put forth in connection
with the motion to determine “whether the activities
respondent has engaged in are sufficient to raise a genuine
issue that its non-use was excusable, thereby, rebutting the
presumption of abandonment.” (Decision, p.11). The Board
found that:
[w]hen we read the evidence of record in the light
most favorable to respondent, we cannot find that
petitioner is entitled to judgment. In particular,
there remain genuine issues of material fact concerning
(1) the character of respondent’s activities in
attempting to relocate the restaurant in Iowa; and (2)
whether respondent’s actions during the period of non-
use are those that a reasonable businessman would take
motion was granted and the exhibits stricken. Accordingly,
respondent is without any evidence of record.
3 The Board pointed out that when this cancellation proceeding
was instituted in May 1995, the statutory period of nonuse for
abandonment purposes was two years. The increase in the period
to three years did not come into effect until January 1, 1996 and
the Board stated that this would not be retroactively applied.
Cancellation No. 24,018
5
pursuant to a plan to use the mark, which might be
sufficient to excuse respondent’s non-use, thereby
avoiding a finding of abandonment.
On the other hand, when we read the evidence in the
light most favorable to petitioner, those same genuine
issues remain as to abandonment, such that, at trial,
we might find respondent’s activities insufficient to
establish its intent to resume use of the MARCO POLO
mark in connection with the services identified in the
registration.
(Decision, p.11-12.)
Petitioner, after amending the petition as had been
suggested by the Board in its decision, then moved for
summary judgment on the ground that respondent had never
used the mark in connection with casino, hotel and bar
services and thus petitioner was entitled to partial
cancellation of the registration as to these services.
The Board, in its decision of March 30, 1999, granted
summary judgment in petitioner’s favor as to the claim that
respondent had never used the involved mark in connection
with casino and hotel services and accordingly granted the
petition for partial cancellation of the registration
insofar as these services were concerned. The Board found
that a genuine issue of fact remained as to whether
respondent had ever used the mark in connection with bar
services, and denied summary judgment as to these services.
As stated by the Board, the issues going forward to
trial were abandonment of the mark for restaurant and bar
services and use of the mark ever in connection with bar
services.
Cancellation No. 24,018
6
Decision
By the law in effect at the time of petitioner’s filing
of the petition to cancel, petitioner could establish a
prima facie case of abandonment with proof of nonuse of the
mark for two consecutive years. See 15 USC § 1127.4 Such a
prima facie case eliminates petitioner’s burden of
establishing the intent element of abandonment as an initial
part of the case and creates a rebuttable presumption that
respondent abandoned its mark without intent to resume use.
See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376
(Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris,
Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990).
The presumption shifts the burden to respondent to produce
evidence that it either used the mark during the statutory
period or intended to resume use. See Rivard v. Linville,
45 USPQ2d at 1376; Cerveceria Centroamericana S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ 1307, 312
(Fed. Cir. 1989). The burden of proof remains, however,
with petitioner to prove abandonment by a preponderance of
the evidence. See Cerveceria Centroamericana S.A. v.
Cerveceria India, Inc., supra.
Petitioner has established that respondent made no use
of the mark MARCO POLO’S in connection with any of the
4 As previously noted, by amendment effective January 1, 1996,
the minimum period of nonuse was extended to three consecutive
Cancellation No. 24,018
7
claimed services from the fall of 1993 until December of
1995. The Board held this to be “undisputed fact” in its
decision on the first motions for summary judgment.
Respondent admitted the same in its answer to the original
petition to cancel. In addition, petitioner points to
respondent’s response to Interrogatory No. 4 as confirmation
of this nonuse of the mark for restaurant services for a
period of more than two years. The response reads in
relevant part:
MARCO POLO’S restaurant opened June 19, 1989 and was
Located off the casino floor at the Lady Luck Casino/
Hotel in Las Vegas, Nevada. This restaurant closed in
the fall of 1993.
...
On or about the last week of December, 1995, a MARCO
POLO’S restaurant opened at the lady Luck Biloxi
property.
(Petitioner’s Notice of Reliance, Exhibit 8).
Respondent has made no proffer of evidence of use of the
mark at any other location for restaurant services or for
any of the other services recited in the registration during
this two year period.
At this point, the burden of going forward shifts to
respondent to provide evidence with respect to its intent to
resume use. This intent to resume use has been equated with
a showing of special circumstances which excuse the nonuse.
In other words, respondent has the burden of establishing
years to establish a prima facie case of abandonment. 108 Stat.
Cancellation No. 24,018
8
excusable nonuse. If respondent’s nonuse is excusable,
respondent will have overcome the presumption that its
nonuse was coupled with an intent not to resume use; if the
activities are insufficient to excuse nonuse, the
presumption is not overcome. See Imperial Tobacco Ltd., 14
USPQ2d at 1395.
Respondent has made no admissible evidence of record
during its testimony period. Thus, respondent has failed to
carry its burden of going forward with evidence which might
establish that its nonuse during this period was excusable.
Respondent has failed to rebut the presumption of
abandonment.5
Accordingly, we find that petitioner has established by
a preponderance of the evidence that respondent has
abandoned use of the mark MARCO POLO’S for all the recited
services, including restaurant and bar services. On this
basis, the registration will be cancelled in full. In view
thereof, we need not consider petitioner’s further ground
for partial cancellation, namely, nonuse of the mark for bar
services.
4809, 4981-82 (1994).
5 We would add that even if the materials submitted in connection
with respondent’s notice of reliance had not been stricken, the
result would be the same. Moreover, any evidence which
respondent might have attempted to introduce of new and later use
of the mark is irrelevant. Once a trademark has been abandoned,
the registration may be cancelled even if use is later resumed.
See Cerveceria Centroamericana S.A., 13 USPQ2d at 1313, n.7.
Cancellation No. 24,018
9
Decision: The petition for cancellation is granted on
the ground of nonuse for casino and hotel services, and on
the ground of abandonment for casino, hotel, restaurant and
bar services.