Mrs. Jean T. Nicholson Ms. Virginia T. Toogood et al.v.Gott Brothers Development, LLC

Trademark Trial and Appeal Board

May 21, 2008

No. 91171444 (T.T.A.B. May. 21, 2008)

Mailed: May 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mrs. Jean T. Nicholson;
Ms. Virginia T. Toogood;
The Trustees of the Dean and Jean T. Nicholson Family Trust,
comprising Dean and Jean T. Nicholson, U.S. citizens; and
The Trustee of the Virginia T. Toogood Family Trust, the
trustee comprising Virginia T. Toogood (“opposers”)
v.
Gott Brothers Development, LLC (“applicant”)
_____

Opposition No. 91171444
to application Serial No. 78633881
_____

Patrick McGovern, Esq. for opposers.

Katja Loeffelholz of Gaw Van Male Smith Myers Miroglio, PLC
for applicant.
______

Before Drost, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by the above-named applicant
to register the mark TAYLOR’S REFRESHER in typed or standard
character form for “restaurant services” in International
Class 43.1 Registration was opposed by the above-named

1 Application Serial No. 78633881 was filed on July 20, 2005
based upon applicant’s assertion of February 3, 2004 as the date
of first use of the mark anywhere and in commerce in connection
with the services.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91171444
2
opposers on the following grounds: that applicant is not
the owner of the mark for which registration is sought;
priority and likelihood of confusion; disparagement and
false suggestion of a connection with opposers; fraud; and
dilution. Applicant, in its answer, denied the salient
allegations of the notice of opposition and asserted as
affirmative defenses the prior registration, or Morehouse,
defense; estoppel; unclean hands; laches; acquiescence;
mistake; and fraud.2
Issues Before the Board
Preliminarily, we must determine what grounds and
defenses have been tried by the parties and are before us in
this case. In the “STATEMENT OF THE CASE AND ISSUES” in
their brief, opposers identify the following as issues in
this case: that applicant is not entitled to registration
of the TAYLOR’S REFRESHER mark inasmuch as it is not the
owner thereof; and fraud. Applicant, for its part,
identifies in the “STATEMENT OF ISSUES” in its brief the
following issues: the prior registration, or Morehouse,
defense; abandonment by opposers of the TAYLOR’S REFRESHER
mark through nonuse; naked licensing by opposers of the

2 Applicant further asserted as an affirmative defense that the
notice of opposition fails to state a claim upon which relief can
be granted. However, inasmuch as applicant did not file a motion
under Fed. R. Civ. P. 12(b)(6) by means of which the sufficiency
of the notice of opposition could be tested, this affirmative
defense has been given no consideration.

Opposition No. 91171444
3
TAYLOR’S REFRESHER mark to applicant; and acquiescence.
We observe that while the related issues of abandonment
and naked licensing are unpleaded, both opposers and
applicant argued these issues in their briefs and neither
objected thereto. We further observe that these matters
relate to the pleaded issue of ownership of the TAYLOR’S
REFRESHER mark. Accordingly, we consider the issues of
abandonment and licensing to have been tried by the implied
consent of the parties, such that we can treat the pleadings
to be amended pursuant to Fed. R. Civ. P. 15(b) to include
them.
The Record
The record consists of the pleadings and the file of
the involved application. In addition, opposers submitted
the testimony, with related exhibits, of Virginia T. Toogood
and Jean Taylor Nicholson. Opposer’s further submitted by
notice of reliance the discovery depositions, with related
exhibits, of applicant’s principals Duncan Bux Gott and Joel
Austin Gott; its written discovery requests upon applicant
and applicant’s responses thereto; a copy of the April 1,
1999 lease agreement between Jean T. Nicholson and Virginia
T. Toogood as landlords and applicant as tenant;3 copies of
printed advertisements; and a printed copy of a Corporation

3 This document was submitted by notice of reliance under seal by
stipulation of the parties, Duncan Gott deposition, p. 91-93.

Opposition No. 91171444
4
Grant Deed to opposers, a public record showing recordation
on December 19, 2005 in the County of Napa, California for
the property upon which, inter alia, the TAYLOR’S REFRESHER
restaurant is located.
Applicant, for its part, submitted the trial testimony,
with related exhibits, of Duncan Bux Gott and Joel Austin
Gott. Applicant further submitted by notice of reliance a
status and title copy of its Registration No. 2710978,
issued on April 29, 2003 for the mark TAYLOR’S AUTOMATIC
REFRESHER for “restaurant services” in Class 43; and
applicant’s written discovery requests upon opposers and
opposers’ responses thereto.
The parties have designated portions of the record as
“confidential.” While the information contained therein
plays a role in determining the issues before us, we are
mindful that such information was filed under seal. Thus,
we will endeavor to refer to those portions of the record
that are marked confidential only in a very general fashion.
Both parties filed main briefs on the case, and
opposers filed a reply brief.
Evidentiary Objections
Opposers have filed an objection to applicant’s
reliance upon the discovery depositions of Virginia T.
Toogood and Jean T. Nicholson, appended to applicant’s main
brief on the case, as well as the discovery deposition of
Opposition No. 91171444
5
Thomas Cary Gott, a principal of applicant, as evidence in
this case. We agree with opposers that applicant failed to
make the discovery depositions of Ms. Toogood and Mrs.
Nicholson of record by notice of reliance or otherwise
during its assigned testimony period. See Trademark Rule
2.120(j). See also generally TBMP §707 and the authorities
cited therein. We further agree with opposers that because
a discovery deposition may only be offered in evidence by an
adverse party, applicant is precluded from offering in
evidence the discovery deposition of Mr. Gott. See Id.
Accordingly, these depositions are not of record, and
will be given no consideration in our determination herein.
General Facts
The following facts are not in dispute. In 1949, Lloyd
“Popsy” Taylor, father of opposers Virginia T. Toogood and
Jean T. Nicholson, established in St. Helena, California a
restaurant named TAYLOR’S REFRESHER on a piece of property
owned by him and his wife. Mr. Taylor and various family
members operated the restaurant until 1968.4 Opposers Ms.
Toogood and Mrs. Nicholson were added to the deed to the
property upon which the restaurant is located upon the death
of their mother in 1954. Upon the death of Mr. Taylor in
1989, Ms. Toogood and Mrs. Nicholson inherited all of his

4 Parties’ stipulation, Toogood Testimony p. 13-15, 23-4;
Nicholson Testimony, p. 8-10, 16.
Opposition No. 91171444
6
real and personal property.5 Subsequently, the property was
transferred into their respective family trusts, where title
is presently held.6
From 1968 until February 17, 1998, Ms. Toogood and her
now-deceased husband operated the TAYLOR’S REFRESHER
restaurant with the help of family members. Operation of
the TAYLOR’S REFRESHER restaurant by opposers and their
predecessors in interest was continuous from 1968 until
February 1998. On February 17, 1998, opposers entered into
a lease of the TAYLOR’S REFRESHER restaurant with Annette
Parks for the term of one year.7 During the term of her
lease, Ms. Parks continuously operated the TAYLOR’S
REFRESHER restaurant. The lease continued by agreement with
opposers on a month to month basis until terminated in April
1999.8
On April 1, 1999, opposers entered into a 15-year lease
with applicant for the property that includes the TAYLOR’S
REFRESHER restaurant.9 The lease requires applicant to
maintain the use permits for the businesses located
thereupon, including the TAYLOR’S REFRESHER restaurant, in
full force and effect for the duration of the lease.10 The
lease further provides opposers a right to enter and take

5 Toogood Testimony, p. 10-11, Exhibit A.
6 Id., Exhibit P.
7 Parties’ stipulation, supra.
8 Toogood Testimony, p. 16-21, Exhibits B and C.
9 Toogood Testimony, Exhibit F. Opposer’s Notice of Reliance.
Opposition No. 91171444
7
over the premises and operations in the event that applicant
failed to maintain these use permits.11 The lease notes
applicant’s “presently anticipated plans … to utilize the
Taylor’s Refresher portion of the Premises for a new or
remodeled restaurant use ….”12 The lease provides in
addition for a percentage rent based upon the revenues of
the businesses operating there.13 The lease does not
specifically require applicant either to utilize the
TAYLOR’S REFRESHER mark in connection with the restaurant or
to operate such a restaurant under another name.
Nonetheless, Ms. Toogood gave applicant her consent to use
the TAYLOR’S REFRESHER mark in connection with the
restaurant located on the leased premises.14 However,
opposers did not consent to use of the TAYLOR’S REFRESHER
mark in connection with restaurant services in other
locations.15
Upon execution of the above noted lease, applicant
engaged in extensive remodeling of the TAYLOR’S REFRESHER
restaurant.16 On September 24, 1999, applicant opened and
proceeded to successfully operate TAYLOR’S AUTOMATIC
REFRESHER restaurant at the location of the former TAYLOR’S

10 Lease Section 1.6.1.
11 Id. at 1.6.2.
12 Id. at 1.5.1.
13 Id. at 4.2, 4.3.
14 Applicant’s response to opposers’ Request for Admission No. 8.
15 Applicant’s response to opposers’ Request for Admission Nos. 9
and 10.
Opposition No. 91171444
8
REFRESHER restaurant on the property leased from opposers.17
On March 5, 2002, applicant filed its application for the
mark TAYLOR’S AUTOMATIC REFRESHER, which issued as
Registration No. 2710978 on April 29, 2003.18 On February
3, 2004, applicant opened a restaurant under the name
TAYLOR’S AUTOMATIC REFRESHER in San Francisco, California.19
On March 9, 2005, opposers Ms. Toogood and Mrs. Nicholson
indicated to applicant that they were consulting with legal
counsel regarding the “use of Taylor’s name, location &
history.”20
The parties agree that the mark TAYLOR’S REFRESHER is
inherently distinctive in relation to restaurant services.21
The parties further agree that opposers have neither
assigned the TAYLOR’S REFRESHER mark, nor transferred the
goodwill in the mark or business, to applicant.
Standing
Standing requires only that opposers have a real
interest in this proceeding. See Section 14 of the
Trademark Act, 15 U.S.C. § 1064; and Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In this case, opposers, through their

16 Discovery deposition of Duncan Gott, 68-69; Toogood Testimony,
Exhibit F.
17 Joel Gott Testimony, p. 12-13.
18 Applicant’s notice of reliance.
19 Joel Gott Testimony, p. 33.
20 Toogood Testimony, Exhibit S.
21 Applicant’s response to opposers’ Request for Admission No. 22.
Opposition No. 91171444
9
testimony and related exhibits, have established that they
and their predecessors in interest have used the mark
TAYLOR’S REFRESHER in connection with restaurant services.
Opposers have asserted, inter alia, a likelihood of
confusion claim directed toward applicant’s use of a highly
similar mark for identical services. Thus, opposers have
demonstrated that they possess a real interest in this
proceeding beyond that of a mere intermeddler, and a
reasonable basis for their belief of damage. See Ritchie v.
Simpson, supra. See also Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). We
further note that applicant does not contest opposers’
standing to bring this opposition.
We find, therefore, that opposers have proven their
standing to bring the instant opposition proceeding.
Affirmative Defenses
Prior to our consideration of the grounds for
opposition that were pleaded and deemed to be pleaded
herein, we first will determine whether opposers’ claims are
barred by applicant’s affirmative defenses.
Turning to applicant’s assertion of the Morehouse
defense, we observe that on December 3, 2007, opposers
brought a petition to cancel applicant’s prior Registration
Opposition No. 91171444
10
No. 2710978, upon which this defense is based.22 It is
settled that, as a matter of law, the Morehouse defense is
not available to a defendant in a Board proceeding if the
plaintiff has petitioned to cancel the prior registration.
See, for example, Hornblower & Weeks Inc. v. Hornblower &
Weeks Inc., 60 USPQ2d 1733 (TTAB 2001).
Accordingly, we find that the prior registration
defense is not available to applicant, and that such defense
cannot, as a matter of law, serve as a bar to opposer’s
claims herein.
As for the affirmative defense of acquiescence, we
observe that as a general rule, the equitable defense of
acquiescence in an opposition or cancellation proceeding
does not begin to run until the mark is published for
opposition. See Krause v. Krause Publications Inc., 76
USPQ2d 1904 (TTAB 2005). Cf. National Cable Television
Association, Inc. v. American Cinema Editors Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991) [laches runs from the
time from which action could be taken against the trademark
rights inhering from registration].
Opposers brought this opposition proceeding on June 20,
2006, just four months after the February 21, 2006
publication date of the application. Moreover, the Board

22 Cancellation No. 92048541 currently is suspended pending the
disposition of the instant opposition proceeding.

Opposition No. 91171444
11
mailed to applicant copies of the March 21, 2006 and April
13, 2006 communications granting opposers’ requests for
extension of time to oppose, respectively filed on the same
dates. Thus, applicant was on notice as early as the last
week of March 2006 of the potential for opposers to file the
instant opposition. This relatively short period cannot be
viewed as an unreasonable delay.
Accordingly, we find that proofs of opposer’s claims
are not barred by acquiescence.
Abandonment
We turn then to the issue of whether opposers have
abandoned their mark and, therefore, whether they lack
superior rights in the TAYLOR’S REFRESHER mark. In this
connection, the effect of abandonment has been described as
follows:
Once abandoned, the mark reverts back to the
public domain whereupon it may be appropriated by
anyone who adopts the mark for his or her own use.
Hence a party that is found to have abandoned its
mark is deprived of any claim of priority in the
mark before the date of abandonment and may regain
rights in the mark only through subsequent use
after the time of abandonment.

See General Cigar Co., Inc. v. G.D.M., Inc., 988 F.Supp 647,
45 USPQ2d 1481, 1489 (S.D.N.Y. 1997), quoting Dial-A-Matress
Operating Corp., v. Matress Madness, Inc., 841 F.Supp 1339,
33 USPQ2d 1961, 1972-73 (E.D.N.Y. 1994).
In this case, applicant argues that opposers stopped
using the TAYLOR’S REFRESHER mark in 1998 when they leased
Opposition No. 91171444
12
the restaurant to Annette Parks. Applicant further argues
that opposers have not adduced any credible evidence that
they intend, after approximately eight years of non-use, to
resume use of the mark in the future. Applicant argues in
addition that it did not commence operation until six months
after signing the lease with opposers and that, as a result
the TAYLOR’S REFRESHER mark, as previously used, lost all
goodwill associated with it. Finally, applicant argues that
the parties are in a landlord/tenant relationship and have
no agreement regarding the licensing of the TAYLOR’S
REFRESHER mark; and that applicant’s operation of the St.
Helena restaurant does not constitute continued use of the
TAYLOR’S REFRESHER mark by opposers.
Applicant contends in the alternative that even if
opposers own the TAYLOR’S REFRESHER mark and licensed such
to applicant, the license contains no provisions for quality
control and thus constitutes a naked license. Applicant
further contends that the inspection and related provisions
in its lease are directed toward the maintenance of the
property and fixtures located thereupon, and not toward the
maintenance of the quality of the food served in the
restaurant. Applicant contends in addition that opposers
play no meaningful role in monitoring or ensuring the
quality of the food and services at the TAYLOR’S AUTOMATIC
REFRESHER restaurant.
Opposition No. 91171444
13
Opposers, for their part, maintain that the lease
between the parties constitutes
an express license to use the name based on the
express inclusion of the use permit, in the name
of Taylor’s Refresher, in the definition of the
Premises leased. This gave Applicant possession
of and the right to use the permit held in the
name Taylor’s Refresher, and hence use of the
name. If the Board so finds, such license would
terminate at the conclusion of the Lease as with
all of tenant’s other rights under the lease.23

Opposers testified that Joel Gott requested, and Ms. Toogood
gave, her verbal consent to use the name TAYLOR’S REFRESHER
after the lease was signed.24 While applicant denies
requesting such permission, applicant acknowledges as noted
above that Ms. Toogood so consented to use of the TAYLOR’S
REFRESHER mark at the St. Helena restaurant located on the
property covered by the parties’ lease.25 Opposers further
maintain that this verbal consent gives rise to an oral
license to use the TAYLOR’S REFRESHER mark at the St. Helena
restaurant during the term of the lease.
Opposers contend in the alternative that in the event
no express license, oral or written, is found in this case,
the terms of the lease constitute an implied license between
the parties to use the TAYLOR’S REFRESHER mark at the St.
Helena location during the terms of the lease. Opposers
further contend that such license only exists during the

23 Opposers’ brief, p. 7-8.
24 Toogood Testimony, p. 31-32.
25 Applicant’s response to opposers’ Request for Admission No. 8.
Opposition No. 91171444
14
term of the lease and that applicant’s use of the mark and
any attendant increase in goodwill resulting from their
efforts inures to the benefit of opposers in their capacity
as landlord. Opposers contend in addition that all of
applicant’s rights to possession of the property upon which
the St. Helena restaurant is located, utilization of the use
permit therefor, and operation of the restaurant itself,
derive solely from the lease agreement between the parties.
Opposers assert that applicant merely leased from
opposers a restaurant that had been in business at that
location under that name for fifty years prior to such
lease. Opposers further assert and present supporting
evidence that applicant attempted to create a sense of
continuity with opposers’ earlier use and goodwill by means
of the following: remodeling the restaurant in such a
manner as to maintain the look and feel of a 1950s era
diner;26 placing new TAYLOR’S REFRESHER signs on the
building that are similar in appearance to the previous
signs;27 maintaining a pre-existing sign on the street in
front of the restaurant bearing the words “Taylor’s
Refresher since 1949”;28 and taking out an advertisement
that states “Taylor’s Refresher is coming back soon!” “It
looks like a demolition … but it’s actually a remodel!”

26 Toogood Testimony, Exhibits E, J, and K.
27 Id., Exhibit E.
28 Id., Exhibit D.
Opposition No. 91171444
15
“Taylor’s will be standing for another 50 years!” and
further states “We are searching out some local history. We
would love to hear your favorite short story about Taylor’s,
or see any cool pictures of you at Taylor’s.”29
Finally, opposers argue that there is no evidence to
support applicant’s contention that opposers have abandoned
their rights in the TAYLOR’S REFRESHER mark. To the
contrary, opposers argue that they presented both testimony
and evidence that they have considered resuming operation of
the restaurant at the conclusion of the lease with
applicant.30 Opposers further argue that the provisions of
the parties’ lease agreement provide for sufficient quality
control by opposers of applicant’s operation. Opposer
argues in addition that both parties agree that the quality
of food and service has improved under applicant’s
operation, such that opposers could reasonably rely upon
applicant’s own quality control.
Section 45 of the Trademark Act provides, in pertinent
part, that a mark is abandoned when the following occurs:
when its use has been discontinued with intent not
to resume such use. Intent not to resume may be
inferred from circumstances. Nonuse for 3
consecutive years shall be prima facie evidence of
abandonment. “Use” of a mark means the bona fide
use of such mark made in the ordinary course of
trade, and not made merely to reserve a right in a
mark.

29 Id., Exhibit L.
30 Toogood Testimony, p. 29-31, 41-42, Exhibit I.
Opposition No. 91171444
16
A party claiming abandonment has the burden of establishing
the case by a preponderance of the evidence. Introduction
of evidence of nonuse of the mark for three consecutive
years constitutes a prima facie showing of abandonment and
shifts the burden to the party contesting the abandonment to
show either evidence to disprove the underlying facts
triggering the presumption of three years nonuse, or
evidence of an intent to resume use to disprove the presumed
fact of no intent to resume use. See Rivard v. Linville,
133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial
Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d
1390 (Fed. Cir. 1990); Cerveceria Centroamericana S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed.
Cir. 1989); and Stromgen Supports, Inc. v. Bike Athletic
Company, 43 USPQ2d 1100 (TTAB 1997). The burden of
persuasion remains with the party claiming abandonment to
prove abandonment by a preponderance of the evidence. See
Online Careline Inc. v. America Online Inc., 229 F.3d 1080,
56 USPQ2d 1471 (Fed. Cir. 2000).
Based upon the testimony and evidence adduced by the
parties herein, we make the following findings. Opposers
and their predecessors in interest own, and from 1949 until
1998, continuously operated, a restaurant known as TAYLOR’S
REFRESHER in St. Helena, California. In February 1998,
opposers leased the TAYLOR’S REFRESHER restaurant for one
Opposition No. 91171444
17
year to Annette Parks, who operated such restaurant until
April 1999. In April 1999, opposers then leased, inter
alia, the TAYLOR’S REFRESHER restaurant to applicant herein
for a period of 15 years. The lease between the parties is
silent as to the requirement that applicant operate such
restaurant under the TAYLOR’S REFRESHER, or any other, name.
Ms. Toogood, one of the opposers herein, verbally consented
to applicant’s use of the TAYLOR’S REFRESHER mark in
connection with applicant’s operation of such restaurant.
Opposers did not consent to applicant’s use of the TAYLOR’S
REFRESHER mark in connection with restaurants located in
other locations. Applicant, since September 1999, has
operated the St. Helena restaurant under the names TAYLOR’S
REFRESHER and TAYLOR’S AUTOMATIC REFRESHER.
Based upon the foregoing, we find that opposers granted
an oral license to applicant for use of the TAYLOR’S
REFRESHER mark in connection with applicant’s operation of
the restaurant in the St. Helena location covered by the
parties’ lease. While applicant denies that it requested
opposers’ permission to use the TAYLOR’S REFRESHER mark, it
does not dispute that opposers granted such permission, or
that it proceeded to operate the leased restaurant under
that name. As such, applicant’s use of the TAYLOR’S
REFRESHER mark is use by a licensee that inures to the
benefit of opposers. See Stetson v. Howard D. Wolf &
Opposition No. 91171444
18
Assoc., 955 F.2d 847, 21 USPQ2d 1783 (2d Cir. 1992).
Inasmuch as we have found that a license exists between
the parties regarding use of the TAYLOR’S REFRESHER mark, we
agree with opposer that applicant is estopped from
challenging the validity of the agreement on the basis of
lack of quality control. Because applicant is challenging
the agreement based on facts which occurred during the time
frame of the “license,” that is, during the time from Ms.
Toogood’s permission to use the TAYLOR’S REFRESHER mark up
to the present time which is still covered by the 15 year
lease agreement, we find that applicant is estopped under
the doctrine of licensee estoppel from asserting that such
agreement is a naked license based upon opposers’ asserted
lack of quality control. See Garri Publication Associates
Inc. v. Dabora Inc., 10 USPQ2d 1694, 1697 (TTAB 1988). See
also, for example, Arleen Freeman v. National Association Of
Realtors, 64 USPQ2d 1700 (TTAB 2002); Estate of Biro v. Bic
Corp., 18 USPQ2d 1382 (TTAB 1991); and 3 McCarthy on
Trademarks and Unfair Competition §18:63 (4th ed.).
Furthermore, we are not persuaded that opposers’
goodwill in the TAYLOR’S REFRESHER mark was extinguished by
its cessation of operation of the St. Helena restaurant in
1998. As noted above, opposers leased operation of the
restaurant to Annette Parks under the TAYLOR’S REFRESHER
mark upon their cessation of the day to day operation
Opposition No. 91171444
19
thereof and then to applicant upon cessation of Ms. Parks’
operation of the restaurant. Nor are we persuaded that
applicant’s own delay of six months between signing its
lease with opposers and the reopening of the restaurant
caused the TAYLOR’S REFRESHER mark to lose all goodwill
associated with it from opposers’ previous use. As noted
above, applicant’s own actions in using the mark, as well as
using pre-existing signage for the mark including the
notation “since 1949,” and stating in its advertisements
that the restaurant would stand for “another 50 years”
suggest applicant’s attempts to evoke opposers’ and its
predecessors’ use of the TAYLOR’S REFRESHER mark and build
upon their goodwill.
In other words, even if we discount Annette Parks’
fourteen month period of less successful operation and
consider applicant’s six-month period of nonuse, applicant
presently operates under lease from opposers a restaurant
under the same name and in the same location as that
operated by opposers and its predecessors for 50 years. It
appears somewhat inconsistent for applicant to argue that
such use, especially given opposers’ oral licensing of the
TAYLOR’S REFRESHER mark to applicant and applicant’s
evocation of opposers’ earlier use, represents an
extinguishing of opposers’ goodwill in the mark or an
abandonment of the same by opposers. We find, therefore,
Opposition No. 91171444
20
that the record before us simply does not support a finding
that opposers have abandoned the TAYLOR’S REFRESHER mark.
In summary, we find that opposers are the owners of the
TAYLOR’S REFRESHER mark; that such use is continuing since
1949 and has not been abandoned; and that applicant’s use of
the TAYLOR’S REFRESHER mark is as a licensee of opposers.
Accordingly, the opposition is sustained on the ground that
applicant is not the owner of the mark for which
registration is sought, and registration to applicant is
refused.
Fraud
Inasmuch as we have found that applicant is not the
owner of the mark for which it seeks registration, we need
not and do not reach the parties’ arguments regarding the
issue of fraud.
DECISION: The opposition is sustained.