Method Pharmaceuticals, LLCv.Pharma 101, LLC

Trademark Trial and Appeal Board

Aug 17, 2020

92068970 (T.T.A.B. Aug. 17, 2020)

Hearing: June 18, 2020 Mailed: August 17, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Method Pharmaceuticals, LLC

v.

Pharma 101, LLC
___

Cancellation No. 92068970
___

W. Scott Creasman of Taylor English Duma LLP
for Method Pharmaceuticals, LLC.

Neil C. Jones of Nelson Mullins Riley & Scarborough, LLP
Pharma 101, LLC
______
Before Shaw, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Respondent Pharma 101, LLC owns a fifty year-old registration of ESTRATEST,
in typed form, for a “male and female hormone tablet” (the “Registration”).1
Respondent acquired the Registration in 2018 by assignment from AbbVie Products
LLC (“AbbVie”), eight years after AbbVie ’s predecessor Abbott Products, Inc. acquired

1 Registration No. 899086, issued September 22, 1970; renewed.
This Opinion is not a
Precedent of the TTAB
Cancellation No. 92068970
2
the Registration by assignment from Solvay Pharmaceuticals, Inc. (“Solvay”), and 26
years after Solvay acquired it from its original owner. The issue in this case is
whether Solvay, Abbott or AbbVie2 abandoned the ESTRATEST mark before it was
assigned to Respondent.
More specifically, Petitioner Method Pharmaceuticals, LLC − a “specialty
pharmaceutical company” which “has a bona fide intention to use the ESTRATEST
mark”3 − alleges in its amended petition for cancellation that prior to assigning the
Registration to AbbVie’s predecessor Abbott, Solvay “had already stopped selling
ESTRATEST branded products with an intention not to resume use,” and that
thereafter neither Abbott nor AbbVie “ever sold any pharmaceutical product under
the ESTRATEST trademark.” As a result, according to Petitioner, the mark was
abandoned prior to its 2018 transfer to Respondent, making the purported
assignment “in gross” and thus invalid. 6 TTABVUE 2, 4-6 (Amended Petition for
Cancellation ¶¶ 2, 15, 16, 23, 29, 32).4 In its answer, Respondent denies the salient

2 Some of the non-party former owners of the involved Registration have undergone one or
more minor name changes, while certain assignments of the Registration recorded with the
Office are identified as a “Change of Name” when the record reveals them to be more in the
nature of assignments to separate entities. In any event, we use “Solvay” and other
abbreviated corporate names to identify each of these entities, without regard to any minor
changes to their full, formal corporate names over the years. We use “assignment” to refer to
true transfers of ownership between previously-separate entities.
3 While Petitioner pleaded ownership of Application Serial No. 87608565 for the mark
ESTRATEST, it abandoned that application shortly after trial.
4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Cancellation No. 92068970
3
allegations in the amended petition for cancellation.5
I. The ACR Record and Evidentiary Objections
The parties agreed to litigate this case using the Board’s accelerated case
resolution (“ACR”) procedure, specifically by shortening the discovery period and
filing “summary judgment-type” briefs accompanied by supporting evidence. 8
TTABVUE. The ACR record automatically consists of the pleadings and, by operation
of Trademark Rule 2.122(b), the file of Respondent’s involved Registration. In
addition, Petitioner introduced:
Testimony Declaration of Scott Tucker, its CEO, and the
exhibits thereto (“Tucker Dec.”). 23 TTABVUE.

Testimony Declaration of W. Scott Creasman, its attorney,
and the exhibits thereto (“Creasman Dec.”). 24 TTABVUE.

Rebuttal Testimony Declaration of Mr. Tucker (“Tucker
Reb. Dec.”). 34 TTABVUE.

Rebuttal Testimony Declaration of Mr. Creasman, and the
exhibit thereto (“Creasman Reb. Dec.”). 35 TTABVUE.

Respondent introduced:
Testimony Declaration of Matthew W. Gasaway, AbbVie’s
Senior Counsel, Enterprise Data and eDiscovery, and the
exhibits thereto (“Gasaway Dec.”). 31 TTABVUE 29-74.

5 Under the heading “Defenses,” Respondent alleges that the amended petition for
cancellation “fails to state a claim for relief,” and argues that “Petitioner has not been injured
or damaged by the ESTRATEST” Registration. However, “failure to state a claim” is not an
affirmative defense but instead an allegation that Petitioner’s pleading is defective, and in
any event Respondent’s “defense” was not supported by a timely motion, and we therefore
decline to consider it. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1753 n.6 (TTAB 2013), aff’d 565 Fed. App’x. 900 (Fed. Cir. 2014) (mem.). As for whether
Petitioner has been injured or damaged, that is an element of Petitioner’s case, rather than
a defense to it. Nobelle.com, LLC v. Qwest Comm. Int’l, Inc., 66 USPQ2d 1300, 1303 (TTAB
2003).

Cancellation No. 92068970
4

Testimony Declaration of Benjamin Burgess, its President,
and the exhibits thereto (“Burgess Dec.”). Id. at 75-85.

Testimony Declaration of Neil C. Jones, its attorney, and
the exhibits thereto (“Jones Dec.”). Id. at 86-115.

Petitioner objects to the admissibility, and questions the reliability, of portions of
Mr. Burgess’s testimony. 36 TTABVUE. Turning first to Petitioner’s true objections
to admissibility, the testimony at Burgess Dec. ¶¶ 7-8 is not hearsay because Mr.
Burgess is merely addressing what Respondent “learned,” rather than relying on a
specific out of court statement by someone else. Cf. Fed. R. Evid. 801(c). This objection
is therefore overruled. Petitioner’s objections to the testimony at Burgess Dec. ¶¶ 14-
16 also are overruled, because the witness is testifying based on his own familiarity
with and perceptions of First Databank and the information it provides. However, to
the extent Mr. Burgess or any other witness states a legal conclusion, that testimony
has not been considered.
As for Petitioner’s “objections” to the reliability of other portions of Mr. Burgess’s
testimony, suffice it to say “we simply accord the evidence whatever probative value
it deserves, if any at all.… Ultimately, the Board is capable of weighing the relevance
and strength or weakness of the objected-to testimony and evidence in this specific
case, including any inherent limitations, and this precludes the need to strike the
testimony and evidence.” Hunt Control Sys. Inc. v. Koninklijke Philips Elecs. N.V., 98
USPQ2d 1558, 1564 (TTAB 2011). See also Grote Indus., Inc. v. Truck-Lite Co., LLC,
126 USPQ2d 1197, 1200 (TTAB 2018) (“We also remind the parties that our
proceedings are tried before judges not likely to be easily confused or prejudiced.
Cancellation No. 92068970
5
Objections to trial testimony on bases more relevant to jury trials are particularly
unnecessary in this forum.”) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d
1537, 1540 (TTAB 2006)); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d
1801, 1804 (TTAB 2018); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468,
1478 (TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1479 (TTAB 2017)). We have kept Petitioner’s objections in mind in
considering and determining the probative value of Respondent’s evidence.6
II. Relevant History of the ESTRATEST Mark and the Involved
Registration
The mark and Registration have changed hands many times since 1970. While
the record reveals that in the last 20 years, only Solvay sold ESTRATEST tablets in
the United States, the mark and Registration have nevertheless generated a fair
amount of interest from not only the parties, but also nonparties.
A. Solvay’s Use of the Mark and Subsequent Transfers of Ownership
Prior to Respondent’s Involvement
The involved Registration issued to Reid-Provident Laboratories, Inc. in 1970 and
decades later was assigned to Solvay, which owned the mark and Registration until
2010. In 2009, however, Solvay decided to stop distributing ESTRATEST. Indeed, in
a May 2009 press release it filed with the United States Securities and Exchange
Commission (“SEC”), Solvay stated that it
… decided in March 2009 to stop the distribution of
ESTRATEST® and ESTRATEST® H.S. This decision is
part of the strategy of the Pharmaceuticals Sector to focus
more of its resources in two key therapeutic areas:

6 We address Respondent’s hearsay objection to Solvay’s SEC filings below in our discussion
of that evidence.
Cancellation No. 92068970
6
cardiometabolic and neuroscience. It is to be noted that
increased competition in this market segment over the past
years put pressure on sales of this drug ….

24 TTABVUE 188. In subsequent press releases and related materials also filed with
the SEC, Solvay stated that the 2009 sales and operating results for its
Pharmaceuticals Sector were “negatively impacted by significant pressure from
generic competition and by the halt of distribution of ESTRATEST® decided upon in
March 2009.” 24 TTABVUE 109. An annex to this press release refers to Solvay’s
ESTRATEST® decision as a “shutdown of distribution … decided upon in March
2009.” Id. at 117 (emphasis added).7
In any event, it appears that the issues with Solvay’s Pharmaceuticals Sector
prompted Solvay to make more wholesale changes, beyond just ESTRATEST. Indeed,
an April 1, 2009 press release Solvay filed with the SEC indicated that the company
“is proceeding with an analysis of various options for its pharmaceutical activities.”
Id. at 195. Eventually, in a September 2009 press release filed with the SEC, Solvay
announced its decision “to refocus the activities of the Solvay Group in order to
accelerate the implementation of its sustainable and profitable growth strategy and
to sell its entire pharmaceutical business to Abbott [Products, Inc.] for a total

7 A 2010 Law360 article reported that Solvay settled two class actions based on its allegedly
falsely marketing ESTRATEST as approved by the U.S. Food and Drug Administration
(“FDA”) when it was not. 24 TTABVUE 518-19. According to the article, despite not being
FDA-approved, the drug was sold legally, because it was “grandfathered in.” Id. See
Yarrington v. Solvay Pharm., Inc., 2010 WL 11453553 (D. Minn. March 16, 2010) and 23
TTABVUE 2 (Tucker Dec. ¶3) (“This is a type of pharmaceutical known as an unapproved
drug. The FDA permits some unapproved prescription drugs to be marketed ….”).

Cancellation No. 92068970
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Enterprise Value of about EUR 5.2 billion.” Id. at 153 (emphasis added); see also id.
at 333-35, 347 (Solvay’s 2009 Annual Report). “The sale of the Pharmaceuticals Sector
to Abbott – decided on in September 2009 – was finalized on February 15, 2010.” Id.
at 354. There is no evidence of record that Solvay used the mark after 2009.
Between 2010 and 2012, several assignments of the Registration were recorded
with the USPTO ultimately resulting in Abbott Products LLC owning the
Registration in 2012.8 Later that year, Abbott assigned the Registration to AbbVie.9
B. Respondent Petitions to Cancel, and then Acquires, AbbVie’s
Registration
Respondent filed a petition to cancel the Registration in 2017 when it was still
owned by AbbVie (Cancellation No. 92066779). 24 TTABVUE 309-10. Respondent
pleaded ownership of its own intent to use application to register ESTRATEST (Serial
No. 87108882), and as grounds for cancellation alleged abandonment. Specifically:
“[u]pon information and belief, [AbbVie] has ceased use of the mark ESTRATEST in
connection with the goods identified in [the Registration] and intends not to resume
such use.” Id. at 310.
About four months later, AbbVie assigned the mark and Registration to
Respondent in exchange for $2,000. 31 TTABVUE 82; 24 TTABVUE 93 (response to
Petitioner’s First Set of Interrogatories No. 3). A few weeks after that, and prior to
AbbVie filing its answer to the petition for cancellation, Respondent withdrew the

8 Reel/Frames: 4846/0080; 4846/0860; 4846/0903.
9 Reel/Frame: 5012/0459.
Cancellation No. 92068970
8
petition without prejudice and recorded the assignment with the Office. 31
TTABVUE 85 (Reel/Frame 6259/0456); 24 TTABVUE 295, 314.10
C. Evidence of Use, Or Intention to Resume Use, of the Mark Between
2010 and Its Assignment to Respondent
Mr. Burgess testified during trial, in his publicly-filed declaration, about
Respondent apparently taking a different position in this proceeding than it took in
2017 and early 2018 when it sought to cancel AbbVie’s Registration:
When it filed the petition to cancel the ESTRATEST
Registration, [Respondent] was not aware that AbbVie
Products desired to license or assign the ESTRATEST
Registration and, thus, had an intent to resume use of the
ESTRATEST trademark and continue the goodwill that
had been built up in the trademark.

31 TTABVUE 76 (Burgess Dec. ¶ 7). See also id. at 24 (Respondent’s Trial Brief at
19, subheading D). Thus, while Respondent designated the specific information
supporting its contention that AbbVie desired to “license or assign” the mark as
“Confidential” under the Board’s Standard Protective Order, it has made public its
basic position in this case that AbbVie’s desire to “license or assign” the mark
establishes an intent to resume use.11

10 During discovery, Respondent admitted that when filed, Respondent’s petition to cancel
the Registration “complied with Federal Rule of Civil Procedure 11(b)(2),” and therefore that
Respondent’s claims “and other legal contentions [were] warranted by existing law or by a
nonfrivolous argument for extending, modifying, or reversing existing law or for establishing
new law.” 24 TTABVUE 81 (response to Petitioner’s First Requests for Admission No. 5).
Respondent explained, however, that when it was filed, the petition was based on
Respondent’s “then-understood information and beliefs.” Id.
11 While we respect Respondent’s Confidentiality designations, “[t]his obligation presents a
significant challenge in discussing the evidence in a publicly accessible opinion.” Kohler Co.
v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 (TTAB 2017); Noble House Home
Cancellation No. 92068970
9
Respondent designated as “Confidential” its response to Petitioner’s Second Set of
Interrogatories No. 7, which sought information concerning Respondent’s contention
that it based its petition to cancel AbbVie’s Registration “on its then-understood
information and beliefs, which [Respondent] later learned were incorrect.” 21
TTABVUE 6. However, the response to this interrogatory cannot reasonably be
considered “Confidential” because it consists of now-public information, including
that AbbVie assigned the Registration to Respondent, and that AbbVie “desired to
out-license and/or assign the mark.” The only additional information we recite here
concerns when Respondent learned of AbbVie’s desire to license or assign the mark:
When [Respondent] contacted AbbVie to discuss
potential assignment, it learned that AbbVie desired to
out-license and/or assign the mark and AbbVie and
[Respondent] negotiated such assignment so that
[Respondent] could continue the goodwill associated with
the mark that it purchased.

Id. (emphasis added). The portion of this response quoted above “cannot reasonably
be considered confidential.” Trademark Rule 2.116(g).
This interrogatory response appears to reveal that it was not until Respondent
contacted AbbVie to discuss a potential assignment that it learned of AbbVie’s desire
to license or assign the mark. In other words, it appears that Respondent may have
been willing to discuss acquisition of the mark at a time when, according to its

Furnishings, LLC v. Floorco Ent., LLC, 118 USPQ2d 1413, 1416 n. 21 (TTAB 2016);
Trademark Rules 2.116(g) (“The Board may treat as not confidential that material which
cannot reasonably be considered confidential, notwithstanding a designation as such by a
party.”) and 2.27(c). Furthermore, to the extent “Confidential” information has “been
discussed, quoted, or cited by one or both parties in their publicly accessible briefs,” or other
publicly accessible filings, there would be no need, nor would it be appropriate, to shield that
information from public view. Kohler Co., 125 USPQ2d at 1475.
Cancellation No. 92068970
10
petition for cancellation, Respondent still believed that the mark had been abandoned
with no intent to resume use.
In any event, the only evidence of AbbVie’s use or intention to resume use of
ESTRATEST relates to AbbVie’s desire to license or assign the mark rather than use
it itself. 21 TTABVUE 4 (Response to Petitioner’s Second Set of Interrogatories No.
5) (the only evidence that AbbVie did not abandon the mark relates to its intention
to license or assign it). As indicated, the evidence concerning AbbVie’s desire to
license or assign the mark is designated “Confidential,” so we do not discuss it
specifically, except to say that it reflects AbbVie’s stated desire to license or assign
the mark, but does not reveal or shed any light on any actions AbbVie may have taken
to accomplish its goal.
D. Evidence of Use of the Mark After 2009
There is no evidence of record of any use of the ESTRATEST mark after 2009.
And, other than the evidence regarding AbbVie’s stated intention to license or assign
the mark, summarized above, there is no evidence of record that any of the mark’s
previous owners intended to resume use of the mark after 2010.
There is, however, evidence of record suggesting that the mark was not used after
2009. As discussed above, Solvay “stopped,” “halted” or “shut down” distribution of
ESTRATEST in 2009. Furthermore, First Databank
operates a pharmaceutical subscription database used by
the pharmaceutical industry to list pharmaceutical
products for sale and provide additional information about
the seller, dosage, pricing, sales history, DEA status, and
similar information. The First Databank database is a
source generally relied upon in the pharmaceutical
industry …. According to a search of the First Databank
Cancellation No. 92068970
11
database conducted by [Petitioner], all ESTRATEST
branded products were discontinued as of March 31, 2009.

23 TTABVUE 3, 6-7 (Tucker Dec. ¶¶ 4-7 and Ex. A).
Mr. Burgess testified, however, that First Databank “is not an official authority,”
that its data “are not independently or objectively verified by the product
manufacturer,” and that “market dates” it provides “fail to account for the sell -off
period for products in the market.” 31 TTABVUE 78 (Burgess Dec. ¶¶ 14-15). On the
other hand, Mr. Tucker testified that ESTRATEST, Petitioner’s generic version
thereof “and any product with the same Active Pharmaceutical Ingredients, has a
shelf life of two years, meaning that it would have an expiration date of two years
after it is manufactured and cannot be sold to the public in the U.S. after that date.”
34 TTABVUE 2-3 (Tucker Reb. Dec. ¶ 4). As explained below, we do not find the First
Databank evidence conclusive on the question of when ESTRATEST was in use, but
it is a “piece of the puzzle.” See generally West Fla. Seafood Inc. v. Jet Restaurants.
Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“However, whether a
particular piece of evidence by itself establishes prior use is not necessarily
dispositive as to whether a party has established prior use by a preponderance.
Rather, one should 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.”).
One of the “Confidential” AbbVie documents appears to specifically confirm that
at least in 2016, AbbVie made no use of ESTRATEST. 30 TTABVUE 10 (Gasaway
Dec. Ex. E). Another document from 2016 appears to indicate that if AbbVie’s desire
to license or assign the mark did not come to fruition, it would take no additional
Cancellation No. 92068970
12
steps regarding the ESTRATEST mark or product. 27 TTABVUE 4 (Gasaway Dec.
¶ 10); 29 TTABVUE 7 (Gasaway Dec. Ex. D). Neither Solvay, nor Abbott, nor AbbVie,
nor Respondent provided any evidence of use of the mark after 2009, and the record
contains no evidence that any of these prior or current owners of the mark used it
after 2009.12
III. Analysis
We address Petitioner’s entitlement to bring this proceeding separately from its
substantive abandonment claim. See 15 U.S.C. § 1064 and Australian Therapeutic
Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed.
Cir. 2020).
A. Entitlement to Statutory Cause of Action for Cancellation13
To establish entitlement to a statutory cause of action under Section 14 of the
Trademark Act, such as a cause of action for abandonment, a plaintiff must
demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa

12 Respondent relies on “Confidential” information, in the nature of materials filed with a
regulatory authority, which it claims support a finding that Solvay had an intention to
continue using the mark in February 2010. 21 TTABVUE 5 (Response to Petitioner’s Second
Set of Interrogatories No. 6). However, affirmative steps taken by Solvay’s successors in
interest resulted in withdrawal of these filings in 2011 and 2012, shortly after Solvay
assigned the mark. Id. at 9-32 (Confidential portions of AbbVie’s document production in
response to a subpoena). In any event, the filings do not establish use of the mark.
13 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 equally applicable.
Cancellation No. 92068970
13
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (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). Petitioner has established its entitlement to bring this
proceeding because it has a “real interest” and a “reasonable belief of damage.”
Australian Therapeutic, 2020 USPQ2d 10837 at *3. Specifically, Petitioner “currently
markets and sells a generic version of the pharmaceutical product originally known
as ESTRATEST. The active pharmaceutical ingredients for this product are esterified
estrogens and methyltestosterone. [Petitioner’s] generic product is called Esterfied
Estrogens and Methyltestosterone … and has been sold in the U.S. since 2017.” 23
TTABVUE 3-4 (Tucker Dec. ¶ 8). Am. Vitamin Prods. Inc. v. DowBrands Inc., 22
USPQ2d 1313, 1314 (TTAB 1992) (petitioner was entitled to seek cancellation on
ground of abandonment because it “is engaged in the manufacture and sale of goods
which are related to those identified in the subject registrations”).
B. Abandonment
Under Section 45 of the Act, 15 U.S.C. § 1127, a mark is considered abandoned
when “its use has been discontinued with intent not to resume such use,” and
“[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment.” That
is, “[i]f plaintiff can show three consecutive years of nonuse, it has established a prima
facie showing of abandonment, creating a rebuttable presumption that the registrant
has abandoned the mark without intent to resume use.” ShutEmDown Sports Inc. v.
Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). “Use” of a mark “means the bona fide
Cancellation No. 92068970
14
use of such mark made in the ordinary course of trade, and not merely to reserve a
right in a mark.” 15 U.S.C. § 1127.
Because registrations are presumed valid under the law, a party seeking to cancel
a registration on the ground of abandonment bears the burden of proof to establish
its case by a preponderance of the evidence. See On-Line Careline, Inc. v. Am. Online,
Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); and Cerveceria
Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307,
1309 (Fed. Cir. 1989). If Petitioner makes a prima facie case of abandonment, the
burden of production, i.e., of going forward, then shifts to Respondent to rebut the
prima facie showing with evidence. Id. “The burden of persuasion remains with the
plaintiff to prove abandonment by a preponderance of the evidence.” ShutEmDown
Sports, 102 USPQ2d at 1042.14
1. The Nature of Nonuse Abandonment Claims
Before addressing whether the record establishes nonuse for three consecutive
years prior to the mark’s assignment to Respondent, we should point out that by their
nature, claims of “nonuse abandonment,” are typically difficult or impossible to prove
by direct evidence. Indeed, in a country of hundreds of millions which comprises a
large portion of North America, obtaining negative evidence from, for example, each

14 Respondent argues that “the preponderance of the evidence standard for abandonment
claims in cancellation proceedings … is improper and is contrary to other courts requiring
abandonment to be shown by clear and convincing evidence.” 31 TTABVUE 14 n.6. We follow
the Federal Circuit, however, which applies the preponderance of the evidence standard.
Cerveceria Centroamericana, 13 USPQ2d at 1310 (“[I]n a cancellation as opposed to an
opposition proceeding, the registrant benefits from a presumption of validity … we conclude
that, as any cancellation petitioner, India bears a burden of proof by a preponderance of the
evidence”).
Cancellation No. 92068970
15
retail outlet or provider which could potentially offer the goods or services in question
would not be feasible, and if doing so were required, it would be essentially impossible
to ever prove abandonment. The law expressly recognizes and explains how to deal
with this problem:
Although Centroamericana suggests that “inference” and
“implication” are inappropriate in establishing prima facie
abandonment, we cannot agree. Especially when a party
must prove a negative, as in proving abandonment through
nonuse, without resort to proper inferences the burdened
party could be faced with an insurmountable task. The
protection due the registrant is provided by requiring that
the inference have an adequate foundation in proven fact.
Whenever an inference is based on pure speculation and
“there is no basis ... to infer nonuse,” a prima facie case of
abandonment must fail.

Cerveceria Centroamericana, 13 USPQ2d at 1310 (citing P.A.B. Produits et Appareils
de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328,
196 USPQ 801, 804-05 (CCPA 1978)).
Relatedly, “[a] registrant’s proclamations of his intent to resume or commence use
in United States commerce during the period of nonuse are awarded little, if any,
weight.” Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998).
In fact, “[i]n every contested abandonment case, the respondent denies an intention
to abandon its mark; otherwise there would be no contest.” Imperial Tobacco Ltd. v.
Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990).
2. Petitioner Has Established a Prima Facie Case of Abandonment
Here, Petitioner has established more than three years of nonuse. Quite simply,
there is no evidence of use of ESTRATEST in the United States between 2010 and
2018.
Cancellation No. 92068970
16
Respondent does not seriously dispute the point. In fact, Respondent cites a
“Confidential” document which appears to confirm that at least AbbVie did not use
the mark. 26 TTABVUE 10-11 (Respondent’s Confidential Trial Brief at 5-6); 27
TTABVUE 4-5 and 30 TTABVUE 10 (Gasaway Dec. ¶ 11 and Ex. E).15
Rather, Respondent merely suggests, without any supporting evidence, that
ESTRATEST hormone tablets may remain on store shelves or are otherwise still
being offered for sale. This type of unsupported conjecture is insufficient to establish
that ESTRATEST was or still is in use, much less on any particular date. Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v.
Gen-Probe Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see
also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there
was no proof to support the statements in the record by counsel). Respondent’s
suggestion is also belied by its August 2017 petition to cancel the Registration for
abandonment when it was owned by AbbVie; if any product remaining on the shelves
was insufficient to show use three years ago, it is insufficient to show use today.
Furthermore, ESTRATEST “and any product with the same Active
Pharmaceutical Ingredients, has a shelf life of two years, meaning that it would have
an expiration date of two years after it is manufactured and cannot be sold to the
public in the U.S. after that date.” 34 TTABVUE 2-3 (Tucker Reb. Dec. ¶ 4). Thus,

15 Prior efforts to seek regulatory approval (designated “Confidential”), especially where the
filings in question were withdrawn eight years ago, do not constitute “use” of a mark, and
Respondent does not argue otherwise.
Cancellation No. 92068970
17
any ESTRATEST tablets that may have remained on store shelves or other outlets
following Solvay’s shutdown of distribution a decade ago would no longer remain
there, or if they did, they could no longer be sold. See also Gen. Motors Corp. v. Aristide
& Co., Antiquaire de Marques, 87 USPQ2d 1179, 1183 (TTAB 2008) (“[R]esidual
goodwill is not sufficient to avoid a finding of abandonment where the goodwill is
generated through subsequent sales of a product by distributors or retailers”) (citing
Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241,
1244 n.5 (TTAB 1989)).
Finally, all of this evidence also seems to be corroborated by the almost shockingly
small $2,000 purchase price for the ESTRATEST mark and Registration. 31
TTABVUE 82; 24 TTABVUE 93 (response to Petitioner’s First Set of Interrogatories
No. 3). It is common knowledge, and portions of the “Confidential” record reveal, that
the process of researching, developing and seeking regulatory approval for
pharmaceutical products is intensive, laborious and exceedingly expensive. This is
perhaps illustrated by Solvay selling its pharmaceutical business to Abbott for the
very large sum of €5.2 billion. 24 TTABVUE 153, 333-35, 347. An SEC-filed Solvay
press release reveals that its sales of ESTRATEST were €38 million in 2008. Id. at
188. Yet, to sell the ESTRATEST trademark and Registration for only $2,000 in 2018
seems way out of line with the drug’s sales figures a decade earlier , and with what
must have been significant costs in bringing the product to market. In fact, the price
is more evocative of, for example, a moderately-valued domain name than a
pharmaceutical product which enjoyed sales in the tens of millions of dollars (or
Cancellation No. 92068970
18
euros) and allegedly remains in use. When we consider that the assignment from
AbbVie to Respondent purported to include “all goodwill symbolized by the Mark,” 31
TTABVUE 82, we find that the cheap purchase price for the mark and Registration
further supports a finding that the mark was not in use when it was assigned to
Respondent, or for some time prior to that.16 Auburn Farms, Inc. v. McKee Foods
Corp., 51 USPQ2d 1439, 1444 (TTAB 1999) (“As for the assignment, one could
conclude from the small monetary amount paid for the registered mark here ($1500)
that the rights in the mark were of minimal value due its nonuse by the owner.”).
3. Respondent’s Attacks on the Evidence of Nonuse Are
Unpersuasive
Respondent argues that we should not draw any inferences from Solvay’s
announced decision, in multiple press releases filed with the SEC, to “halt” or “shut
down” distribution of ESTRATEST. We find, however, that the press releases are

16 To the extent Respondent suggests that ESTRATEST enjoys “residual goodwill,” this
theory is insufficient to defeat Petitioner’s abandonment claim. Cf. Parfums Ltd. v. Am. Int’l
Indus., 22 USPQ2d 1306, 1309 (TTAB 1992) (“As to respondent’s contention that there
somehow was residual goodwill in the registered mark by virtue of the product’s long
shelf life and possible continued sales by retailers, this contention is wholly speculative and,
in any event, unsupported. A party cannot defend against a claim of abandonment by relying
on some residual goodwill generated through post-abandonment sales of the product by
distributors or retailers.”) (emphasis added). Here of course, the product has just a two-year
shelf life. See also Societe Des Produits, 10 USPQ2d at 1244 n.5 (TTAB 1989)
(“Applicant/respondent argues that its mark is still in use in commerce as long as a bottle of
‘ROYAL MONIER’ liqueur sits on a shelf in a retail store … Applicant/respondent has failed
to support its position with any authority, however, and, in our view, a party cannot defend
against a claim of abandonment by relying on some ‘residual goodwill’ generated through
subsequent sales of the product by distributors or retailers.”); Bangor Punta Operations, Inc.
v. Am. Sterling Enters., Inc., 184 USPQ 243, 248 (TTAB 1974) (“While there may have been
some residual good will in the mark ‘TRAIL STAR’, immediately or shortly after the
discontinuance thereof, where there has been no sale or promotion of any product under the
mark for approximately four years, whatever public or general good will that resided in the
mark must necessarily have been dissipated over the years.”).
Cancellation No. 92068970
19
persuasive; that they are corroborated by the First Databank evidence and the sale
of Solvay’s Pharmaceuticals Sector to Abbott; and that the evidence relating to Abbott
and AbbVie not only fails to contradict Solvay’s announcements, but rather tends to
corroborate them.
Respondent contends that we may not rely on Petitioner’s SEC filings and printed
publications announcing a “halt”/“shutdown” of distribution of ESTRATEST for the
truth of the matters asserted therein. Generally, Respondent would be correct given
the nature of this evidence. However, here those materials are not hearsay, and to
the extent they are, the state of mind and residual exceptions to the hearsay rule
apply. In any event, even if the materials are not relied upon for the truth of the
matters asserted, they nevertheless support Petitioner’s abandonment claim.
The SEC filings are not hearsay because they are essentially admissions of a
party-opponent under Fed. R. Evid. 801(d)(2). In fact, while Solvay is not a party to
this case, it is not only one of Respondent’s predecessors-in-interest, but according to
the record, essentially became Abbott in a name change. Indeed, the assignment from
Solvay to Abbott is recorded as a “Change of Name,” and is supported by the Articles
of Amendment of [Solvay’s] Articles of Incorporation and Certificate of Amendment
reproduced below:
Cancellation No. 92068970
20

Reels/Frames 4846/0080 and 4846/0860. As shown, and as Mr. Gasaway put it,
“Solvay Pharmaceuticals, Inc. (‘Solvay’) changed its name to Abbott Products, Inc.”
31 TTABVUE 29 (Gasaway Dec. ¶ 4). Abbott Products, Inc. later changed its name
and thus became Abbott Products LLC. Reel/Frame 4846/0903. As Mr. Gasaway put
it, “Abbott Products, Inc. changed its name to Abbott Products LLC.” 31 TTABVUE
29 (Gasaway Dec. ¶ 4). Then Abbott Products LLC changed its name and thus became
AbbVie Products LLC, which assigned the mark and Registration to Respondent.
Reels/Frames 5012/0459 and 6259/0456. According to Mr. Gasaway, AbbVie Products
LLC “is a wholly-owned subsidiary of” AbbVie Inc, and AbbVie Inc. “is a spin-off of
Abbott Laboratories.” 31 TTABVUE 29 (Gasaway Dec. ¶¶ 2, 3).
Cancellation No. 92068970
21
“That the assignee of a registration stands in the place of the registrant
in all respects is also clear from section 45 of the Lanham Trade-Mark Act, 15
U.S.C.A. § 1127 which provides that ‘The terms ‘applicant’ and ‘registrant’ embrace
the legal representatives and successors and assigns of such applicant or registrant. ’”
Gillette Co. v. Kempel, 254 F.2d 402, 117 USPQ 356, 357 (CCPA 1958) (emphasis
added)17; Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1790 n.9 (TTAB 2006)
(“[T]he law is well established that an assignee stands in the shoes of its assignor”);
Morgan Servs. Inc. v. Morgan Linen Servs. Inc., 12 USPQ2d 1842, 1842 (TTAB 1989).
Thus, through the series of assignments and name changes recorded with the Office,
Respondent stands in the shoes of AbbVie, which stands in the shoes of Abbott
Products LLC, which stands in the shoes of Abbott Products, Inc., which stands in
the shoes of Solvay, which made the admissions in its SEC filings and elsewhere that
we attribute to Respondent based on the chain of assignments.18 See Tracinda Corp.
v. DaimlerChrysler AG, 362 F. Supp.2d 487, 504 (D. Del. 2005) (“Eaton’s statements
qualify as an admission under Rule 801(d)(2) given his role as Chief Executive Officer
of Chrysler, one of the predecessors of DaimlerChrysler.”); Sherif v. AstraZeneca, No.
Civ.A. 00-3285, 2002 WL 32350023 *3 (E.D. Pa. 2002) (“To decline to accept these
statements as admissions against a party-opponent solely because AstraZeneca is the

17 The current version of the statute is more inclusive, and provides: “The terms ‘applicant’
and ‘registrant’ embrace the legal representatives, predecessors, successors and assigns of
such applicant or registrant.” 15 U.S.C. § 1127 (emphasis added).
18 The other elements of Fed. R. Evid. 801(d)(2) are met, because the record reveals that
Solvay adopted the statements and believed them to be true, as it made them to the public
and the SEC, and the statements to the SEC were made by Solvay’s External and Financial
Communications Officer. 24 TTABVUE 107; Fed. R. Evid. 801(d)(2)(B)-(D).
Cancellation No. 92068970
22
only named party would elevate form over substance. The companies are essentially
the same; only the name has changed. Consequently, Emmens’ and Herman’s
admissions as to the corporate culture in which employment decisions were being
made are admissible against defendant AstraZeneca.”).
Even if Solvay’s statements in its SEC filings and elsewhere are hearsay,
exceptions apply. First, the SEC filings and other materials announcing the planned
halt/shutdown of distribution of ESTRATEST are “statement[s] of the declarant’s
then-existing state of mind (such as motive, intent, or plan).” Fed. R. Evid. 803(3).
Second, the “residual exception” to the hearsay rule applies in these
circumstances, because the statements Solvay made in its press releases and annual
report upon which Petitioner relies, and especially those statements which were filed
with the SEC, are “supported by sufficient guarantees of trustworthiness” under Fed.
R. Evid. 807(a)(1) and are “more probative on the point for which [they are] offered
than any other evidence that the proponent can obtain through reasonable efforts”
under Fed. R. Evid. 807(a)(2).
The information Solvay filed with the SEC has enhanced, more than sufficient
trustworthiness because if it were false, under certain circumstances Solvay might
have been criminally liable for perjury under 18 U.S.C. § 1001 (“[W]hoever, in any
matter within the jurisdiction of the … Government of the United States, knowingly
and willfully … makes any materially false, fictitious, or fraudulent statement or
representation …” may have committed perjury). Cf. In re NAHC, Inc. Sec. Litigation,
306 F.3d 1314, 1331 (3d Cir. 2002) (finding “no reversible error” by district court in
Cancellation No. 92068970
23
taking judicial notice of SEC filings and relying on them “for the truth of the matter
asserted”); Kramer v. Time Warner Inc., 937 F.2d 767, 774 (2d Cir. 1991) (taking
judicial notice of the content of SEC filings in part because they contain facts “capable
of accurate and ready determination by resort to sources whose accuracy cannot
reasonably be questioned” and stating “the documents are required by law to be filed
with the SEC, and no serious question as to their authenticity can exist”). To the
extent other information upon which Petitioner relies, such as statements in Solvay’s
2009 Annual Report, may not have been filed with the SEC, those statements are
nevertheless reliable because the Annual Report was sent to Solvay’s
investors/shareholders, who may have had a civil cause of action against Solvay if it
made false statements in its Annual Report. Furthermore, it is hard to see why Solvay
would be untruthful about decreasing ESTRATEST revenue, or getting out of the
pharmaceuticals business. Typically, we would expect a corporation to be more likely
to make misleading optimistic or favorable statements than pessimistic or negative
ones, especially when communicating with investors/shareholders.
The information is likely more probative than other evidence Petitioner could have
obtained because Solvay is a Belgian company which filed its materials with the SEC
through its Belgium-based External and Financial Communications Officer, and it
left the pharmaceuticals business a decade ago. 24 TTABVUE 107. “There is no
certain procedure for obtaining, in a Board inter partes proceeding, the trial
testimony deposition of a witness who resides in a foreign country, is an adverse party
or a non-party (or an official or employee of an adverse party or non-party), and is not
Cancellation No. 92068970
24
willing to appear voluntarily to testify.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 703.01(f)(3) (June 2020). In any event, because it
is out of the pharmaceuticals business, there is no reason to believe that Solvay could
produce a witness with knowledge of what happened in 2009 and 2010 even if it
wanted to do so. Moreover, Petitioner conducted discovery of Respondent and Solvay’s
successor-in-interest AbbVie, and specifically requested both to provide evidence that
the ESTRATEST mark was not abandoned. Neither provided any information or
documents other than stating that AbbVie considered licensing or assigning the
mark, if possible. 21 TTABVUE 4-6 (Respondent’s Responses to Petitioner’s
Interrogatory Nos. 5-7); 24 TTABVUE 97-98 (Respondent’s Responses to Petitioner’s
Document Request Nos. 11-13); 29 TTABVUE 7 (Gasaway Dec. Ex. D). In other
words, there would have been nothing for Petitioner to gain by seeking information
from Respondent or AbbVie, which claimed to have provided all responsive
information in their possession. Id.
In any event, even if we did not rely on Solvay’s SEC filings and Annual Report
for the truth of the matters asserted therein, they would still be an important “piece
of the puzzle” which support a finding of nonuse for at least three years. The point is
that Solvay announced to the world, in these materials designed for public
consumption, that for business reasons it was stopping distribution of ESTRATEST
tablets in March 2009, and selling its entire pharmaceutical business to Abbott in
2010. Whether the statements were true or not, the fact that a quite sizable
pharmaceutical company would make such an announcement to its shareholders and
Cancellation No. 92068970
25
investors, the public at large and the United States government leads to an inference,
corroborated by multiple persuasive additional pieces of evidence, that it did what it
announced it would do.
Indeed, Office records establish, and Respondent concedes, that a short time after
its announcements Solvay did follow through on its stated intention to assign its
entire pharmaceuticals business to Abbott via the “Change of Name” to Abbott. Thus,
it is obvious that Solvay did not use the mark itself after it became Abbott.
In fact, even if we did not rely on the SEC filings and other Solvay materials for
any purpose whatsoever, nonuse has still been established. There is no evidence
that Abbott or AbbVie used the mark, and Respondent and AbbVie specifically stated
in discovery responses that the only evidence that AbbVie did not abandon the mark
is its desire to license or assign it. In other words, AbbVie, which acquired the mark
in 2012, did not use the mark before assigning it to Respondent in 2018. This far
exceeds the three years which establish Petitioner’s prima facie case .
All of this is corroborated by the First Databank evidence. Respondent’s
unsupported suggestions that this evidence may not be complete would perhaps be
more persuasive if this evidence was all that Petitioner relied upon, but it is not.
Furthermore, this is exactly the type of evidence which led in part to a finding of
abandonment in Cerveceria Centroamericana, specifically “testimony by Howard
Rosenberg, the General Manager of a Washington, D.C. beer importer and wholesaler
and an expert in imported beers, that he checked various reference books and
from them and his personal knowledge was not aware of any MEDALLA DE ORO
Cancellation No. 92068970
26
beer ever on sale in Washington, D.C.” 13 USPQ2d at 1308-09 (emphasis added). In
fact, this and other evidence carried the day in Cerveceria Centroamericana, even
though, in sharp contrast to this case, the respondent presented evidence to the
contrary. Id. at 1312 (“Castillo’s testimony was discredited by the testimony of
Howard Rosenberg …. We see nothing to question this credibility determination, and
therefore conclude that TTAB’s finding of nonuse between 1977 and 1984 was not
clearly erroneous.”).
All of this evidence is consistent, mutually corroborating and persuasive that the
mark was not used for at least three years between 2010 and its assignment to
Respondent in 2018. Even if some ESTRATEST tablets remained on the shelves after
2010, and there is no evidence that any did, they would have expired in 2012, more
than five years before AbbVie assigned the mark to Respondent.19
4. Respondent Has Not Rebutted Petitioner’s Prima Facie Case
Respondent has not met its “burden of production, i.e., of going forward … to rebut
[Petitioner’s] prima facie showing with evidence.” In fact, as indicated, the only
evidence Respondent put forward to rebut Petitioner’s prima facie case relates to
AbbVie’s desire to license or assign the mark, but Respondent has not presented any
evidence of any steps taken to actually license or assign (until the assignment to
Respondent in 2018). This is not sufficient, especially when we keep in mind that a
“registrant’s proclamations of his intent to resume or commence use in United States

19 Respondent’s reliance on Solvay’s October 1, 2009 renewal of the Registration, 31
TTABVUE 21-22, is misplaced. Even if that filing established use on October 1, 2009, it
proves nothing about the crucial period between 2010 and 2018.
Cancellation No. 92068970
27
commerce during the period of nonuse are awarded little, if any weight.” Rivard, 45
USPQ2d at 1376 (Board “reasonably inferred that Rivard did not have the requisite
intent” where he made “cursory investigations of potential sites for salons, and half -
hearted attempts to initiate the business relationships necessary to open a salon”).
“Merely not intending to abandon a mark is not enough to sustain rights in it.” First
Nat’l Bank of Omaha v. Autoteller Sys. Serv. Corp., 9 USPQ2d 1740, 1742 (TTAB
1988). See also Imperial Tobacco, 14 USPQ2d at 1394.
Indeed, in Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477 (TTAB 2017), in sharp
contrast to this case, there was evidence of specific, repeated efforts to license the
mark which did not come to fruition. We found there that a party “cannot rely on
desultory efforts to license a mark” to defeat an abandonment claim. Id. at 1487
(“Evidence of vague discussions concerning the potential use of the mark at some
unknown point in the future are insufficient to show an intent to resume use.”).20 See
also Yazhong Investing Ltd. v. Multi-Media Tech Ventures, Ltd., 126 USPQ2d 1526,
1539 (TTAB 2018) (“Respondent cannot rely upon mostly unsubstantiated assertions
of vaguely defined efforts, apparently conducted without an operating budget, to
license goods and services in order to keep someone else from adopting a mark it has
abandoned.”). Furthermore, here, as in Azeka, Respondent “has not given any

20 The food products at issue in Azeka are obviously less complicated and easier to produce
than the pharmaceuticals at issue in this case. At the same time, however, AbbVie (and
Solvay, Abbott and for that matter Respondent) are pharmaceutical companies, and at least
Abbott and AbbVie have demonstrated the capacity to offer pharmaceutical products. Actual
use is required, regardless of the nature of the product. Allowing a party to escape a finding
of abandonment based solely on the nature of the goods would be contrary to the Trademark
Act. See Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013).
Cancellation No. 92068970
28
explanation or reason why [AbbVie] could not use the mark [ESTRATEST] on its own
in the absence of a license; the record is simply devoid of any evidence showing a
specific and consistent plan to resume use ….” Id. at 1488.
In any event, even if AbbVie licensed the mark, and it did not, licensing without
sales of the goods in question, in this case male and female hormone tablets, “is not
by itself use of the mark.” General Motors, 87 USPQ2d at 1185. Here, there is no
evidence of sales of ESTRATEST tablets since 2009.
IV. Conclusion
When we consider the record in its entirety, we find that it “is consistent with a
subjective desire to reserve a right in the [ESTRATEST] mark.” Exec. Coach Builders,
Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1192 (TTAB 2017). That is not
sufficient to overcome Petitioner’s prima facie showing of abandonment. In fact, when
Respondent acquired the mark and Registration in 2018 for $2,000, the mark had
already been abandoned, and thus the transaction was nothing more than a “naked”
assignment without accompanying goodwill. Auburn Farms, 51 USPQ2d at 1441.
Respondent’s and AbbVie’s post-abandonment “efforts, of whatever nature and
quality, represent a new and separate use, and cannot serve to cure the prior
abandonment.” Parfums, 22 USPQ2d at 1310.

Decision: The petition to cancel is granted.