Ryan Takahashiv.Bradley Imports, Ltd.

Trademark Trial and Appeal Board

Aug 18, 2004

No. 92040069 (T.T.A.B. Aug. 18, 2004)

Mailed: August 18, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Ryan Takahashi
v.
Bradley Imports, Ltd.
_____
Cancellation No. 92040069
_____
Peter E. Nussbaum of Wolff & Samson PC and Matthew R. Miller of
Law Offices of Matthew Miller for Ryan Takahashi.
Ezra Sutton of Ezra Sutton, P.A. for Bradley Imports, Ltd.
_____
Before Hohein, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ryan Takahashi, a United States citizen, has petitioned
to cancel the registration, issued to Bradley Imports, Ltd., of
the mark "WEST SIDE" and skyline design, as reproduced below,
for "women's, men's, children's and infants' underwear, jeans,
pants, shorts, jackets, swimwear, sweaters, shirts, vests, tank
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92040069
2
tops, sweatshirts, and outerwear and rainwear, namely, vests,
jackets, coats, snowsuits and snowpants; children's scarves,
gloves and knickers; children's and infants' hats, overalls and
rompers; children's and women's leg warmers, body stockings,
leotards, skirts, tube tops and halter tops; women's, children's
and infants' blouses and dresses; infants' legging sets; and
children's and men's outerwear and rainwear shirt jackets."1
As grounds for cancellation, petitioner alleges that he
"has been continuously using the Trademark WESTSIDE in commerce
in connection with Clothing, namely, jackets, sweaters,
sweatshirts, pants, shorts, sweatpants, T-shirts, shirts, tank
tops, polo shirts, woven and knit shirts, socks, underwear,
overalls, dresses, skirts, vests, pajamas, jumpsuits, track
suits, bathing suits, belts, suspenders, neck ties, bandannas,
wrist bands, head bands and outerwear, namely, snow pants, snow
jackets, ski bibs, snow suits, gloves, insulated and thermal
pants[,] jackets and shirts; headgear, namely, hats, caps, [and]
sun visors; and footwear, namely[,] shoes since at least as early
as October 1998"; that petitioner "is informed and believes that
the Registrant is not using the Trademark WEST SIDE in the United
States"; that, on information and belief, "the Trademark WEST
SIDE ... is no longer being used by the Registrant or any
assignee or transferee thereof in connection with the goods
recited in the [involved] registration or in connection with any
other goods or services"; that "[t]he Trademark WEST SIDE has
1 Reg. No. 1,414,282, issued on October 21, 1986 from an application
filed on May 23, 1983, which sets forth a date of first use anywhere
Cancellation No. 92040069
3
been abandoned by the Registrant within the meaning of Section 14
of the 1946 Lanham Trademark Act, 15 U.S.C. § 1064(c)"; that,
accordingly, the involved registration "for the Trademark WEST
SIDE should be canceled because the Trademark has been abandoned
in the United States by the Registrant"; that "[o]n February 14,
2001[,] Petitioner filed an Application in the United States
Patent and Trademark Office to register the Trademark WESTSIDE
for [the above noted items of] Clothing ..., which ... has been
assigned Serial No. 76/209257"; that [o]n June 26, 2001[,] the
United States Patent and Trademark Office mailed an office action
refusing registration of Petitioner's Application Serial No.
76/209257, for the mark WESTSIDE, indicating, inter alia, that
Petitioner's mark was likely to be confused with Registrant's ...
mark WEST SIDE"; and that "[i]f Registrant's Registration No.
1,414,282 is permitted to remain on the Register, Petitioner may
be unable to overcome the aforementioned refusal of
registration."
Respondent, in its answer, has denied the salient
allegations thereof.
The record consists of the pleadings; the file of the
involved registration; and notices of reliance timely filed by
petitioner2 on (1) respondent's answers (dated July 19, 2002) to
and in commerce of October 1975; combined affidavit §§8 and 15.
2 It is noted that the Board's March 4, 2003 order, which suspended
proceedings for six months in view of an indication that the parties
were negotiating for a settlement of this case, crossed in the mail
with a stipulated motion, which was timely received on February 28,
2003, to go forward herein and extend all testimony periods, beginning
with petitioner's initial testimony period. Accordingly, the Board's
March 4, 2003 suspension order is vacated and the parties' February
Cancellation No. 92040069
4
(a) petitioner's Interrogatory Nos. 6 (including the documents
submitted in response thereto), 11, 13 and 16, (b) petitioner's
Requests for Admissions Nos. 7 and 8, and (c) petitioner's
Requests for Production of Documents Nos. 3 through 8, 11, 13
through 16, and 18 through 22;3 and (2) official records of the
United States Patent and Trademark Office ("USPTO") with respect
to application Serial No. 76209257 for registration of the mark
"WESTSIDE." Neither party, however, took testimony or submitted
any other evidence. Only petitioner filed a brief, and neither
party requested an oral hearing.
According to the record, petitioner filed application
Serial No. 76209257 on February 14, 2001 seeking to register the
mark "WESTSIDE" for various items of apparel. Registration
thereof was refused, in an Office action issued on June 26, 2001,
on the ground that petitioner's mark is likely to cause confusion
with the "WEST SIDE" and skyline design mark which is the subject
of respondent's involved registration. Such application is
currently suspended pending the disposition of this proceeding.
As to respondent, the record shows that its sole use of
the term "WEST SIDE" is in connection with swimwear, which bears
the mark "WEST SIDE" and floral design, as shown below,
28, 2003 stipulated motion is granted, thereby resetting petitioner's
initial testimony period to close on April 18, 2003.
3 While, in light of Trademark Rule 2.120(j)(3), it is pointed out that
answers to requests for production of documents are not proper subject
matter for a notice of reliance, such answers have been considered
herein inasmuch as respondent has not objected thereto. See TBMP
§704.11 (2d ed. rev. 2004).
Cancellation No. 92040069
5
rather than the "WEST SIDE" and skyline design mark which is the
subject of its involved registration. In particular, while
Interrogatory No. 6 requests that, "[f]or each product bearing or
sold under the mark WEST SIDE," respondent "describe in detail
how the mark WEST SIDE appears on each such product ... and how
it is used in connection with the sale, offering for sale,
distribution, or manufacture of each such product," respondent
has not indicated any products in its answer thereto other than
referring to the swimwear which it offers under the "WEST SIDE"
and floral design mark illustrated above. Furthermore, with
respect to its "WEST SIDE clothing," respondent indicates in
answer to Interrogatory No. 11 that it has not attended any trade
shows where such clothing "was displayed, sold, offered for sale,
and/or promoted." Moreover, as to "the mark WEST SIDE,"
respondent confirms in answer to Interrogatory Nos. 13 and 16
that it has not placed any "advertisements ... which were
distributed, aired or otherwise disseminated" using such mark or
otherwise spent any amount on advertising any "products bearing
or sold under" such mark. Likewise, in answer to Requests for
Admissions Nos. 7 and 8, respondent admits that it does not
display "the mark WEST SIDE" in connection with clothing at trade
shows and that it does not advertise such mark.
In a similar vein, respondent reveals in its answers to
various Requests for Production of Documents that, other than the
documents showing use of the above noted "WEST SIDE" and floral
design mark in connection with hang tags for swimwear, it has no
Cancellation No. 92040069
6
labels, invoices, packing slips, tags, markings or advertising
for "the mark WEST SIDE"; and it has no catalogs, brochures,
fliers, sales meeting materials or descriptive materials in
general which relate to any product sold or distributed under
such mark. Also, other than likewise referring to documents
indicating the use of the above noted "WEST SIDE" and floral
design mark in connection with hang tags for swimwear, respondent
answered "none" in response to requests that it produce
representative documents reflecting both the total number of
units of "WEST SIDE clothing" manufactured by or on behalf of
respondent and the total number of such units sold by respondent,
and representative specimens of each type of label, container,
carton, tag, invoice, sticker, box, bag, packaging, silkscreen,
and/or any other means by which respondent has applied or used
"the mark WEST SIDE" on or in connection with any products.
Respondent, in addition, unequivocally answered "none"
in response to requests that it produce the following: all
advertisements placed either by respondent or on its behalf with
respect to each of the products on which it uses "the mark WEST
SIDE"; photocopies of all periodical publications, including
magazines, newspapers, trade publications and catalogs, in which
products bearing or sold under such mark have been advertised,
promoted or featured; all documents which relate to the method of
marketing and distribution of its products sold under "the mark
WEST SIDE"; all documents relating to the actual and intended
channels of distribution of each of the products bearing or sold
under such mark; all sales reports and royalty payment reports
Cancellation No. 92040069
7
for each product bearing or sold by or on behalf of respondent
under "the mark WEST SIDE"; all documents identifying or listing
each outlet or store in the United States which sells, offers for
sale, promotes or advertises any product manufactured,
distributed or sold by respondent under such mark; all contracts
between respondent and its distributors of, manufacturers of and
customers for any products bearing or sold under such mark; all
documents and things relating to respondent's attendance at any
trade shows and exhibitions of goods bearing or sold under "the
mark WEST SIDE"; all documents relating to and/or identifying the
retail price of each of the products bearing or sold under such
mark; representative documents reflecting respondent's total
gross sales "for WEST SIDE clothing"; and all documents relating
to the date respondent first became aware or acquired knowledge
of petitioner and/or its use of "the mark WESTSIDE."
Turning to the merits of this proceeding, petitioner
has clearly established his standing to be heard on the claim of
abandonment by having proven that his application, Serial No.
76209257, to register the mark "WESTSIDE" for various items of
apparel has been refused on the basis that such mark is likely to
cause confusion with respondent's "WEST SIDE" and skyline design
mark for certain articles of clothing, which is the subject of
the registration involved herein. See, e.g., Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982) [to have standing in a cancellation proceeding, "it
would be sufficient that appellee prove that it filed an
Cancellation No. 92040069
8
application and that a rejection was made because of appellant's
registration"].
As to petitioner's claim that respondent has abandoned
its registered "WEST SIDE" and skyline design mark, Section 45 of
the Trademark Act, 15 U.S.C. §1127, defines abandonment of a mark
in relevant part as follows:
Abandonment of mark. A mark shall be
deemed to be "abandoned" when ... the
following occurs:
(1) When its use has been discontinued
with intent not to resume such use.
Intent not to resume may be inferred
from circumstances. Nonuse for three
consecutive years shall be prima facie
evidence of abandonment. "Use" of a
mark means the bona fide use of that
mark made in the ordinary course of
trade, and not made merely to reserve a
right in the mark.
Petitioner, noting that "much of the focus of Petitioner's
written discovery requests was to determine the extent to which,
if at all, Respondent is using the [registered] mark," argues in
his brief that the sole use shown by respondent in answer thereto
"consist[s] of hang tags that were attached to four women's
bathing suits produced by Respondent" and that "none of these ...
bear[s] the mark covered by the subject registration."
Petitioner asserts that, "[b]ased upon Respondent's responses to
Petitioner's written discovery requests [as] discussed above,
Respondent has not demonstrated any use whatsoever of the mark
covered by the registration sought to be cancelled in this
proceeding, either through use on the goods themselves or through
any advertising or marketing materials."
Cancellation No. 92040069
9
In view thereof, and citing Rivard v. Linville, 133
F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998) for the
proposition that "[a] prima facie showing of abandonment
eliminates a challenger's burden to establish the intent element
of abandonment as an initial part of its case and creates a
rebuttal presumption that the registrant abandoned the mark
without intent to resume use under the statute," petitioner
contends that (emphasis in original):
The evidence presented by Petitioner
demonstrates that Respondent has abandoned
the mark WEST SIDE and design covered by the
subject registration due to a period of non-
use [sic] for at least three years. In fact,
Respondent has produced no evidence
whatsoever of use of the subject mark WEST
SIDE and design and therefore has not, and
cannot, rebut the presumption that the mark
has been abandoned. ....
....
Since Petitioner expressly requested
through its written discovery requests that
Respondent produce evidence to demonstrate
its use of the mark, and Respondent has
completely failed to do so, it must be
presumed that Respondent has abandoned the
mark. ....
In addition, petitioner maintains that respondent may
not rely upon its limited use of the "WEST SIDE" and floral
design mark to avoid the presumption of abandonment of its
registered "WEST SIDE" and skyline design mark. Specifically,
citing Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156,
17 USPQ2d 1866, 1868 (Fed. Cir. 1991), petitioner correctly
observes that for tacking to be permissible, "the two marks must
create the same continuing commercial impression and the
Cancellation No. 92040069
10
previously used mark must be the legal equivalent of the mark in
question or indistinguishable therefrom[,] such that consumers
should consider the marks to be the same" (emphasis by
petitioner). Thus, as to respondent's registered "WEST SIDE" and
skyline design mark and its "WEST SIDE" and floral design mark,
petitioner argues that (footnote omitted):
There can be no argument that the two
marks ... are legally equivalent or create
the same commercial impression. The use of
two completely different design elements
serves to drastically alter the commercial
impressions created by the respective marks.
The mark covered by the subject registration
includes a design element of the New York
City skyline connoting the impression of the
"west side" of Manhattan and its famous
skyline. In contrast, the only mark that
Respondent produced [evidence of use] in
response to Petitioner's discovery requests
features a design element comprised of
stylized flowers and an entirely different
stylized format for the words "west side."
.... This new mark has no connection
whatsoever to New York City or its well-known
skyline, and therefore has an entirely
different commercial impression than the mark
covered by the subject registration. [Here]
..., a simple visual inspection of the two
marks ... clearly demonstrates that the mark
covered by the subject registration and the
mark that Respondent has produced evidence of
use of are not "legally equivalent." ....
Accordingly, Respondent cannot possibly rely
upon the use of this entirely different mark
to avoid the presumption that it has
abandoned the mark covered by the subject
registration, especially since Respondent has
produced no evidence whatsoever of use of the
subject mark.
We agree with petitioner that the discovery answers
made of record are sufficient to establish a prima facie case of
abandonment. In particular, the record demonstrates that not
only does respondent admit that it has not advertised and does
Cancellation No. 92040069
11
not advertise any products under its registered "WEST SIDE" and
skyline design mark and that, similarly, it has not promoted and
does not promote any items of clothing under such mark at trade
shows, but the only documentation which respondent has provided
regarding goods which it has for sale and any sales of clothing
are a few items of swimwear which bear hang tags displaying the
significantly different "WEST SIDE" and floral design mark. We
concur with petitioner, moreover, that for the above mentioned
reasons stated in his brief, the "WEST SIDE" and floral design
mark does not create the same continuing commercial impression,
and thus is not the legal equivalent of, respondent's registered
"WEST SIDE" and skyline design mark. Respondent, therefore, may
not tack its use of the "WEST SIDE" and floral design mark so as
to avoid a finding of abandonment of its registered "WEST SIDE"
and skyline design mark.
In short, despite petitioner's various discovery
requests therefor, respondent furnished no evidence showing that,
during a period extending for more than three years prior to the
date it furnished its answers to such requests, it had made any
sales or other use of its "WEST SIDE" and skyline design mark in
connection with any of the clothing items set forth in its
involved registration. While, of course, respondent had the
opportunity to explain its nonuse of its "WEST SIDE" and skyline
design mark, it offered no testimony or other evidence in its
behalf during its testimony period.4 Respondent's failure to
4 Cf. Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d
1503, 1507 (TTAB 1993) ["we hold that absent other facts which
Cancellation No. 92040069
12
rebut petitioner's prima facie showing of abandonment accordingly
entitles petitioner to cancellation of the involved registration.
Decision: The petition to cancel is granted and Reg.
No. 1,414,282 will be canceled in due course.
adequately explain or outweigh the failure of an applicant to have any
documents supportive of or bearing upon its claimed intent to use its
mark in commerce, the absence of any documentary evidence on the part
of an applicant regarding such intent is sufficient to prove that the
applicant lacks a bona fide intention to use its mark in commerce"
and, thus, "[a]n allegation to such effect ... states a claim upon
which relief can be granted"]. A fortiori, absent a satisfactory
explanation thereof, respondent's lack of any documents showing actual
use of its registered mark in connection with advertising, trade show
promotions and/or product sales suffices to demonstrate a prima facie
case of abandonment.