Sony Mobile Communications Inc.v.Vizio, Inc.

Trademark Trial and Appeal Board

Jul 20, 2021

92070572 (T.T.A.B. Jul. 20, 2021)

Mailed: July 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sony Mobile Communications Inc.
v.
Vizio, Inc.
_____

Cancellation No. 92070572
_____

Ann K. Ford, John M. Nading, and Devika Persuad of DLA Piper LLP (US)
for Sony Mobile Communications Inc.

Carlo F. Van Den Bosch and Michelle L. Wisniewski of Sheppard, Mullin,
Richter & Hampton LLP for Vizio, Inc.
_____

Before Bergsman, Goodman and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Vizio, Inc. (Respondent) is the owner of Registration No. 4324763 for the mark
CINEMAWIDE, in standard character form, on the Principal Register, for
“televisions, displays and monitors, namely, liquid crystal display televisions and
liquid crystal display monitors; home theater systems comprising audio and video
receivers,” in International Class 9.1

1 Registered April 23, 2013; Section 8 declaration accepted.
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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Sony Mobile Communications Inc. (Petitioner) petitions to cancel Respondent’s
registration on the ground of abandonment. Petitioner alleges Respondent “has not
used the CINEMAWIDE Mark, as depicted in the Registration, in commerce for at
least three consecutive years in the United States,”2 and “has no plans or intentions
to use the CINEMAWIDE Mark, as depicted in the Registration in the United States,
at any time now or in the future.”3
Respondent, in its Answer, denies the salient allegations in the Amended Petition
for Cancellation.
On October 9, 2020, Petitioner filed a Motion for Summary Judgment.4 After the
briefing was completed, the Board denied Petitioner’s Motion for Summary Judgment
because Petitioner failed to prove its entitlement to a statutory cause of action5 and
“[a]t a minimum, genuine disputes of material fact exist as to Respondent’s cessation
of use of its involved mark and Respondent’s intent not to resume use of its involved
mark.”6
On May 5, 2021, the Board held a telephone conference with the parties to discuss
Accelerated Case Resolution (“ACR”) procedures. The parties stipulated that, in lieu
of a full trial, the parties’ summary judgment briefs and accompanying evidence
would be the final record and briefs in the case. The parties further stipulated that

2 Amended Petition for Cancellation ¶6 (10 TTABVUE 4).
3 Amended Petition for Cancellation ¶7 (10 TTABVUE 4).
4 24 TTABVUE.
5 31 TTABVUE 3-4.
6 31 TTABVUE 6.
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Petitioner would supplement its summary judgment evidence by filing a copy of the
file wrapper for its pleaded pending application with the Board by June 4, 2021.7
I. Preliminary Issue
The description of goods in the registration at issue originally included “audio
speakers; audio accessories, namely audio speakers and audio speakers in the nature
of speaker bars” (Audio Goods). Respondent, in its Section 8 Declaration of Use, filed
September 24, 2019, (after the February 12, 2019 filing date of the Petition for
Cancellation), deleted those goods without the consent of Petitioner.
The Board, in its February 18, 2001 order denying Petitioner’s Motion for
Summary Judgment, addressed Respondent’s deletion of the Audio Goods without
Petitioner’s consent citing Trademark Rule 2.134(b), 37 C.F.R. § 2.134(b).8 That rule
provides that, after commencement of a cancellation proceeding, if a Respondent
allows its registration to be cancelled under Section 8, the Board may issue an order
to show cause why such cancellation should not be deemed to be the equivalent of a
cancellation request by Respondent without the consent of the adverse party and
should not result in entry of judgment.
The purpose of an order to show cause in that situation is to prevent a respondent
from intentionally mooting a cancellation (thereby avoiding judgment), and to give
the respondent an opportunity to submit a showing that the cancellation of that
registration was the result of inadvertence or mistake, in which case judgment would

7 33 TTABVUE.
8 31 TTABVUE 7-8.
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not be entered against it. See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies,
11 USPQ2d 1154, 1156 (TTAB 1989) (where registrant stated that failure to file a
Section 8 affidavit was result of deliberate business decision made prior to
commencement of proceeding and not to avoid judgment, judgment was not entered
as to that ground); C.H. Guenther & Son, Inc. v. Whitewing Ranch Co., 8 USPQ2d
1450 (TTAB 1988) (failure to renew was unintentional and not due to abandonment);
Abraham’s Seed v. John One Ten, 1 USPQ2d 1230, 1232 (TTAB 1986) (respondent’s
belief that it was improper to file a Section 8 affidavit since “the cancellation action
had priority,” while erroneous, was treated as sufficient showing of cause to avoid
entry of judgment.).
In response to the Board’s order to show cause, Respondent asserts that judgment
should not be entered against Respondent because it deleted the Audio Goods from
its registration “in good faith and with good cause” when it filed its Section 8
Declaration of Use.9 Specifically,
[Respondent’s] own Section 8 deletion did not confer any
actual tactical advantage or moot [Petitioner’s] claims. It
follows that [Respondent] did not have reason to delete the
Audio Goods for that purpose. Rather, [Respondent]
deleted Class 9 “audio speakers; audio accessories, namely
audio speakers and audio speakers in the nature of speaker
bars” from the Registration in good faith. On the date its
Section 8 documents were due it was not using the
CINEMAWIDE trademark on the Audio Goods. So, it had
no option but to delete those goods from the Registration.
The deletion was not made with this proceeding in mind,
but solely to conform to the affidavit requirements of § 18
U.S.C. § 1001. Such motives do not demonstrate bad faith

9 32 TTABVUE 2.
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intent to moot this proceeding and, therefore, do not
warrant judgment under Trademark Rule 2.134(b).10
Where, as here, a respondent deletes some, but not all, of the goods in a single
class, the deletion constitutes an amendment, not a voluntary surrender, of the
registration as to that class. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 602.02(a) (2021). See also Trademark Rule 2.133(a), 37 C.F.R.
§ 2.133(a) (a registration subject to cancellation may not be amended in substance,
except with the consent of the other party and the approval of the Board, or upon
motion granted by the Board).
The Board, in its discretion, may grant a motion to amend a registration that is
the subject of an inter partes proceeding, even if the other party or parties do not
consent thereto. TBMP § 514.03
When a respondent files a motion to amend a registration in substance without
the consent of the other party or parties, the respondent should make the motion to
amend prior to trial, in order to give the other party or parties fair notice thereof. An
unconsented motion to amend that is not made prior to trial, and which, if granted,
would affect the issues involved in the proceeding, normally will be denied by the
Board unless the matter is tried by express or implied consent of the parties pursuant
to Fed. R. Civ. P. 15(b). TBMP § 514.03.

10 32 TTABVUE 3-4.
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Although Respondent did not file a motion to amend its description of goods to
delete the Audio Goods, the deletion of the goods in its Section 8 Declaration of Use
is the equivalent of a motion to delete the goods.
As noted above, Respondent filed its Section 8 Declaration of Use deleting the
Audio Goods on September 24, 2019, prior to the opening of Petitioner’s trial period
of April 9, 2020, as set in the Board’s June 5, 2019 order.11 Thus, Respondent filed
the Section 8 Declaration of Use deleting the goods prior to trial giving Petitioner fair
notice.12
Inasmuch as Petitioner focused its abandonment claim on Respondent’s failure to
use CINEMAWIDE in connection with televisions after 2012, Respondent’s deletion
of the Audio Goods did not affect the prosecution of Petitioner’s abandonment claim.
We juxtapose the facts in this proceeding with the facts in Abraham’s Seed, supra.
In Abraham’s Seed, respondent mistakenly believed that the cancellation proceeding
relieved respondent from having to file a Section 8 declaration. While respondent was
incorrect, the Board found its explanation a sufficient showing of cause to avoid entry

11 8 TTABVUE 9.
12 On August 11, 2020, during discovery, Petitioner deposed Carlo Angulo, Respondent’s
Director of Brand Management. (24 TTABVUE 34). Petitioner questioned the witness
regarding Respondent’s cessation of CINEMAWIDE in connection with Audio Goods. Angulo
Discovery Dep., p. 41-43 and 82 (24 TTABVUE 74-76 and 115). Angulo did not know when
Respondent stopped using the mark in connection with Audio Goods. Angulo Discovery Dep.,
pp. 43 and 82 (24 TTABVUE 76 and 115). However, in 2019, Angulo confirmed that
Respondent had no need to use CINEMAWIDE in connection with Audio Goods. Angulo
Discovery Dep., p. 82 (24 TTABVUE 115).
Petitioner, in its Motion for Summary Judgment, noted Respondent had deleted the “Audio
Goods” in its Section 8 Declaration of Use (24 TTABVUE 4). Petitioner did not contend that
it was entitled to judgment on those goods because Respondent deleted them without
Petitioner’s consent.
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of judgment pursuant to Rule 2.134. Id. (1 USPQ2d at 1232). In this proceeding,
Respondent filed its Section 8 declaration deleting the Audio Goods to comply with
the requirements of Section 8, not to avoid entry of judgment. However, Respondent
mistakenly failed to file a motion to amend the description of goods with the Board in
accordance with Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a). As in Abraham’s
Seed, we find Respondent’s explanation sufficient to avoid the entry of judgment
against the Audio Goods.
To the extent the deletion of the Audio Goods in its Section 8 Declaration of Use
is the equivalent of a motion to delete the goods, we grant Respondent’s motion to
delete the Audio Goods and find Respondent has shown cause why judgment should
not be entered against it on Petitioner’s abandonment claim in connection with the
deletion of the Audio Goods in Respondent’s Section 8 Declaration of Use.
We dismiss the cancellation as to the Audio Goods as moot.
II. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file.
Petitioner introduced the declaration of John M. Nading, one of Petitioner’s
attorneys, who authenticated the following testimony and evidence:13

13 24 TTABVUE 29-32.
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● Discovery deposition of Carlos Angulo, Respondent’s Director of Brand
Management, in his personal capacity, with exhibits;14
● Discovery deposition of Carlos Angulo as Respondent’s witness designated under
Fed.R.Civ.P. 30(b)(6), with exhibits;15
● An email from Respondent’s Customer Support to Kyle Lopez, Respondent’s
private investigator;16
● Documents produced by Respondent in response to Petitioner’s request for
production of documents;17 and
● A copy of Petitioner’s application Serial No. 88284334 for the mark
CINEMAWIDE, in standard character form, for “smartphones; tablet computers;
personal digital assistants in the shape of a watch; earphones; telecommunication
machines and apparatus, namely, cellular phones, mobile phones, personal digital
assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile
apparatus for recording, transmission, processing and reproduction of data, sound or
images; display screens for telecommunication machines and apparatus; OLED
(Organic light emitting diode) displays; downloadable computer firmware for
operating system programs for smartphones; photographic machines and apparatus,

14 24 TTABVUE 34-203. The Board posted the portions of the Angulo deposition the parties
designated as confidential at 23 TTABVUE 35-235 and the portions designated Attorneys’
Eyes Only at 25 TTABVUE 35-235.
15 24 TTABVUE 205-278. The Board posted the portions of the Angulo deposition the parties
designated confidential at 23 TTABVUE 237-523 and the portions designated Attorneys’
Eyes Only at 25 TTABVUE 237-520.
16 24 TTABVUE 289-290.
17 23 TTABVUE 626-1287.
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namely, cameras, digital cameras, video cameras; cinematographic machines and
apparatus; electronic publications, namely, manuals for telecommunication machines
and apparatus recorded on computer media,” in International Class 9, printed from
the USPTO Trademark Status and Document Retrieval system (TSDR).18
Respondent introduced the following testimony:
● Declaration of Carlos Angulo with exhibits;19 and
● Declaration of Michelle L. Wisniewski, one of Respondent’s attorneys, with
exhibits.20
III. Entitlement to a Statutory Cause of Action.21
Although Respondent does not contest Petitioner’s entitlement to a statutory
cause of action, formerly referred to as “standing” by the Federal Circuit and the
Board, entitlement to a statutory cause of action is an element of the plaintiff’s case
in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277 (Fed. Cir. 2020) ), cert. denied, ___ S. Ct. ___ (2021); Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory

18 35 TTABVUE.
19 27 TTABVUE 29-51. The Board posted the portions of the Angulo declaration the parties
designated confidential at 28 TTABVUE.
20 27 TTABVUE 52-57. The Board posted the portions of the Wisniewski declaration the
parties designated confidential at 28 TTABVUE.
21 Our decisions have previously analyzed the requirements of Sections 1063 and 1064 under
the rubric of “standing.” 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 “standing” under §§ 1063 and 1064 remain applicable.
Cancellation No. 92070572

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cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of
interests protected by the statute and (ii) a reasonable belief in damage proximately
caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See
also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
The USPTO cited the mark CINEMAWIDE in Respondent’s Registration No.
4324763, the mark and registration at issue in this proceeding, as a Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), bar to registration of Petitioner’s application
Serial No. 88284334 for the mark CINEMAWIDE.22 This is sufficient to prove
Petitioner’s commercial interest in the proceeding and a reasonable basis for
Petitioner’s belief of damage.
We regard the desire for a registration with its attendant
statutory advantages as a legitimate commercial interest.
To establish a reasonable basis for a belief that one is
damaged by the registration sought to be cancelled, a
petition may assert a likelihood of confusion which is not
wholly without merit … or, as here, a rejection of an
application.
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). See also Empresa Cubana, 111 USPQ2d at 1062 (“Because the USPTO refused
Cubatabaco registration based on a likelihood of confusion with General Cigar’s
Registrations, Cubatabaco has a real interest in cancelling the Registrations and a
reasonable belief that the Registrations blocking its application are causing it

22 35 TTABVUE 41-43 and 45-46.
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damage.”); Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d
1912, 1914 (TTAB 2007) (“petitioner has standing to bring the petition for
cancellation based on the fact that its application to register [its mark] was refused
registration by the office under Section 2(d) based on a likelihood of confusion with
respondent’s previously registered mark”).
Petitioner has proven its entitlement to a statutory cause of action.
IV. Abandonment
A. Applicable Law
Under Section 45 of the Trademark Act, a mark shall be deemed to be abandoned:
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.
15 U.S.C. § 1127.

Further, since we presume a registration is valid, 15 U.S.C. § 1057(b), the party
seeking its cancellation must rebut this presumption by a preponderance of the
evidence. Cold War Museum v. Cold War Air Museum, 586 F.3d 1352, 92 USPQ2d
1626, 1628 (Fed. Cir. 2009); W. Fla. Seafood Inc. v. Jet Rests., Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994). “If 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. The burden of production (i.e., going forward) then shifts to the
respondent to produce evidence that it has either used the mark or that it has
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intended to resume use (e.g., a convincing demonstration of ‘excusable non-use’ that
would negate any intent not to resume use of the mark.”). The burden of persuasion
remains with the plaintiff to prove abandonment by a preponderance of the evidence.”
Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413,
1417 (TTAB 2016) (citing Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390, 1393 (Fed. Cir. 1990)).
“Abandonment is a question of fact.” Quality Candy Shoppes/Buddy Squirrel of
Wisc., Inc., 90 USPQ2d 1389 (TTAB 2007). “[A]s is true with most issues of trademark
law, the determination of abandonment is peculiarly dependent on the facts of each
particular situation and remarks in prior opinions are of little help.” Sterling Brewers,
Inc. v. Schenley Indus., Inc., 441 F.2d 675, 169 USPQ 590, 593 (CCPA 1971).
B. Facts
Respondent first offered the CINEMAWIDE television for sale in June 2012.23 The
CINEMAWIDE television offered the viewer a 21:9 aspect ratio corresponding to the
aspect ratio for most movies and, therefore, the content filled the screen, presenting
“consumers with an opportunity to have a theater-like experience in the home
environment.”24

23 Angulo 30(b)(6) Dep., p. 31 (24 TTABVUE 235). See also Angulo Discovery Dep., pp. 91-92
(24 TTABVUE 124-125) (Respondent launched CINEMAWIDE televisions in 2012); Angulo
Discovery Dep., pp. 126-127 (24 TTABVUE 159-160) (Respondent launched a line of
televisions in 2012 that played to the CINEMAWIDE experience).
24 Angulo 30(b)(6) Dep., p. 26 (24 TTABVUE 230). See also Angulo Discovery Dep., p. 57
(24 TTABVUE 90) (CINEMAWIDE televisions play movie content on the entire screen);
Angulo Decl. ¶5 (27 TTABVUE 30).
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Respondent stopped manufacturing CINEMAWIDE brand televisions in 2013,25
and it last distributed a CINEMAWIDE brand television in 2013.26 Respondent only

25 Angulo 30(b)(6) Dep., pp. 42 (24 (TTABVUE 246). See also Angulo Decl. ¶18 (28 TTABVUE
35) (improperly designated confidential). Pursuant to Trademark Rule 2.116(g), 37 C.F.R.
§ 2.116(g), “[t]he Board may treat as not confidential that material which cannot reasonably
be considered confidential, notwithstanding a designation as such by a party.”
26 Angulo 30(b)(6) Dep., pp. 43-44 and 50-51 (24 TTABVUE 247-248 and 254-255).
Carlos Angulo changed the testimony in his discovery depositions in his declaration. Angulo
Decl. ¶18 (28 TTABVUE 35) (improperly designated confidential) (“[Respondent] moves
inventory on vizio.com for as long as it is available, a window that can run 18-24 months from
a product’s manufacture. I recall that [Respondent] last sought manufacture of XVT Models
in Spring 2013. [Respondent’s] manufacturing turnaround is generally about two months
long. Therefore, XVT Models manufactured in Spring 2013 were made available for purchase
in late Spring/early Summer 2013 and were then available for sale on vizio.com into 2015.”).
During his Rule 30(b)(6) deposition, Carlos Angulo was uncertain about the status of
Respondent’s inventory of CINEMAWIDE televisions. Angulo testified Respondent “possibly”
had inventory of CINEMAWIDE televisions in 2014 (Angulo 30(b)(6) Dep., p. 144
(23 TTABVUE 380)), Angulo did not know “with certainty” if Respondent had any inventory
in 2015 (Angulo 30(b)(6) Dep., p. 144 (23 TTABVUE 380)), and Angulo did not know if
Respondent had any inventory in 2016 (Angulo 30(b)(6) Dep., p. 143 (23 TTABVUE 379)).
An organization served with a Fed. R. Civ. P. 30(b)(6) notice of deposition has an obligation
not only to pick and produce persons who have knowledge of the subject matter identified in
the notice but also to prepare those persons so that they can give complete, knowledgeable,
and binding answers as to matters known or reasonably available to the organization. TBMP
§ 404.06(b) (citing A&E Prods. Grp. L.P. v. Mainetti USA Inc., 70 USPQ2d 1080, 1086
(S.D.N.Y. 2004) (and cases cited therein). If the witness does not have personal knowledge,
the witness may review the organization’s records to become familiar with the topics for the
deposition so that he or she may give knowledgeable and binding answers for the
organization. TBMP § 404.06(b) (citing Int’l Finance Corp. v. Bravo Co., 64 USPQ2d 1597,
1605 (TTAB 2002). If it becomes obvious during the course of a Fed. R. Civ. P. 30(b)(6)
deposition that the organization’s designee is deficient regarding his or her knowledge of
matters reasonably known to the organization, the organization is obliged to provide a
substitute and to prepare a designee to provide testimony in areas as to which its other
representative was uninformed. TBMP § 404.06(b) (citing United Tech. Motor Sys. Inc. v.
Borg-Warner Auto. Inc., 50 USPQ2d 1060, 1062 (E.D. Mich. 1998); Tulip Comput. Int’l B.V.
v. Dell Comput. Corp., 63 USPQ2d 1527, 1533 (D. Del. 2002) (purported failure to produce an
adequately prepared Fed. R. Civ. P. 30(b)(6) witness may require a second deposition of that
or another Fed. R. Civ. P. 30(b)(6) witness and payment of costs for second deposition)).
At no time during Rule 30(b)(6) deposition of Carlos Angulo did it become apparent that
Angulo was unprepared or did not have the requisite knowledge. Accordingly, Respondent is
bound by Angulo’s 30(b)(6) deposition testimony and Respondent may not change it by
submitting a subsequent declaration. See Rainey v. Am. Forest and Paper Ass’n, Inc., 26 F.
Supp.2d 81, 94-95 (D.C.D.C. 1998) (Rule 30(b)(6) prohibits the deposed party from adducing
Cancellation No. 92070572

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used CINEMAWIDE as part of a product name for the above-noted line of televisions
launched in 2012,27 and last manufactured a CINEMAWIDE television in 2013.28
Respondent is not currently distributing a television with CINEMAWIDE as part of
the product name.29
Retailers with inventory of Respondent’s CINEMAWIDE televisions continue to
advertise the sale of televisions.30
“[T]ypically the way it works -- [Respondent will] sell the
product to the retailer, and then the retailer will continue
to promote the product. And as of -- as of 2016, there -- I
know that there are -- there were products in the
marketplace. I don’t know when or if the product had -- is
now sold or when it was sold.31

facts from a witness that differs from the facts articulated by the deposed party’s designated
representatives). Cf. Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988, 1997
(TTAB 2015) (“Applicant has not provided credible reasons for the wholesale substantive
changes sufficient to overcome their questionable timing and nature of the changes.”);
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (“The Board
has made it clear that, while typographical and editorial corrections may be made in a
transcript, any changes in a testimony deposition which are substantive in nature and, in
effect, change the testimony after the fact, will not be considered.”) (citing Cadence Indus.
Corp. v. Kerr, 225 USPQ 331, 333 n.4 (TTAB 1985); Entex Indus., Inc. v. Milton Bradley Co.,
213 USPQ 1116, 1117 n.2 (TTAB 1982)). Compare Westrex Corp. v. New Sensor Corp.,
83 USPQ2d 1215, 1217 (TTAB 2007) (Board denied motion to strike summary judgment
declaration on the basis that it contradicted the witness testimony in his 30(b)(6) deposition
because the declaration clarified and explained the contradictions) (citation omitted).
27 Angulo Discovery Dep., p. 63 (24 TTABVUE 96).
28 Angulo 30(b)(6) Dep., p. 42 (24 TTABVUE 246).
29 Angulo 30(b)(6) Dep., p. 44 (24 TTABVUE 248).
30 Angulo Discovery Dep., p. 92 (24 TTABVUE 125).
31 Angulo Discovery Dep., p. 139 (24 TTABVUE 172).
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Carlos Angulo testified Costco and Walmart had inventory of CINEMAWIDE
televisions in 2017.32 Angulo Declaration Exhibit 19 is an excerpt from a Webcollage
report for CINEMAWIDE television activity on Sam’s Club’s and Walmart’s websites
through November 2016.33 Webcollage is a third-party “cloud intelligence platform”
that reports on Respondent’s product listings and activity on retailer websites.34 The
Webcollage report indicates CINEMAWIDE television “product activity” on Sam’s
Club’s and Walmart’s websites as late as November 2016.35
Angulo 30(b)(6) Deposition Exhibit U lists the date customers registered their
television model No. XVT3D580CM with Respondent for “what appears to be
February 2018 through August 2019.”36 Model No. XVT3D580CM is a

32 Angulo 30(b)(6) Dep., p. 55 (24 TTABVUE 259). See also Angulo 30(b)(6) Dep., p. 57
(24 TTABVUE 261) (Costco and Walmart had inventory of CINEMAWIDE branded
televisions in 2016 and 2018).
33 Angulo Decl. ¶22 and Exhibit 19 (28 TTABVUE 39 and 204-205) (confidential).
34 Angulo Decl. ¶21 (28 TTABVUE 38) (improperly designated confidential).
35 “Exhibit 19 is an excerpt from a document that [Respondent] produced in this case, Bates
No. VIZ1321 et. seq. Bates VIZ1321 et. seq. is a spreadsheet that was produced to [Petitioner]
both as a PDF and in native form.” Wisniewski Decl. ¶11 (27 TTABVUE 54).
Mr. Angulo testified only that the report identified “product activity” on retailer websites. He
did not testify as to whether the report identified sales of CINEMAWIDE televisions. Angulo
specifically identified the information in Columns A, B, C, D, E and K. He did not identify
the meaning of Column T “Incremental Online Sales,” Column U “Incremental Online Sales”
(same heading), Column V “Incremental In-Store,” and Column W “Incremental Sales
(Total).” We will not speculate as to what the information in those columns means. In other
words, based on Mr. Angulo’s testimony the Webcollage report is not evidence of retailer
sales.
36 Angulo 30(b)(6) Dep., pp. 212-213 and Exhibit U (23 TTABVUE 448-449 and 1289) (with
the redaction, Exhibit U was improperly designated confidential).
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CINEMAWIDE brand television.37 The information came from from
information customers entered when they registered their purchase.38 Between
February 28, 2018 and August 13, 2019, six customers registered their
CINEMAWIDE televisions with Respondent. The report lists six registrations of
televisions reported by the customers:
● Sale from Walmart on November 23, 2012;
● Sale from an unknown location on July 13, 2015;
● Sale from Costco on March 1, 2018;
● Sale from Walmart on July 18, 2018;
● Sale from an unknown location on November 26, 2018;
● Sale from an unknown location on May 7, 2019.
Respondent still has a webpage for the above-noted CINEMAWIDE line of
televisions introduced in 2012.39 Respondent has continuously posted a webpage
featuring the CINEMAWIDE television.40
[Respondent] intentionally creates robust online product
listings as a one-stop location where customers can learn
about a product to make pre-purchase, purchase, and post-
purchase decisions. [Respondent’s] digital branding

37 Angulo 30(b)(6) Dep., p. 32 (25 TTABVUE 275). See also Angulo Decl. ¶9 and Exhibit 8-10
(27 TTABVUE 31-32, 88, 109 and 178). See also the model number listed in the Webcollage
report supra.
38 Angulo Discovery Dep., pp. 214-216 (23 TTABVUE 450-452).
39 Angulo Discovery Dep., p. 103 (24 TTABVUE 136). See also Angulo Discovery Dep., p. 140
(24 TTABVUE 173); Angulo Decl. ¶11 and Exhibit 60 (27 TTABVUE 32 and 297-298).
40 Angulo Discovery Dep., p. 141 24 (TTABVUE 174). See also Angulo 30(b)(6) Dep., p. 93
(24 TTABVUE 268) (Respondent is still posting the webpage to support existing customers
and provide information).
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through vizio.com is a core component of its advertising
strategy.41
Respondent maintains the CINEMAWIDE webpage on “to support
existing customers that own this television.”42
Q. So how does this web page support existing
customers, that are, to use your words, continue - -
“continuing to use this product”?
A. This website has a number of - - of supporting
materials that would be beneficial to a customer that
has this product in their home and they may have
inquiries or questions around certain aspects or
features of -- of the product, or maybe they just want
the user manual and they don’t have it on hand, and
this is a good opportunity to go in here and download
it.
Q. How does this web page support customers who are
considering purchasing such a product?
A. This web page is complete with details around the
model number that is listed in here. And for any
customer that is considering a purchase of this model
number, they can click on the “Overview” to learn
more about the product, they can click on the “Tech”
flag to get the specifications, and they can click under
“Support” to understand all the tools that they have
available once they’ve purchased the product.
Q. So is it like a Wikipedia page for the product?
A. You can describe it like that.43
In the summer/fall of 2018, Angulo met with his product development team and
discussed using CINEMAWIDE to identify the black bar detection feature of

41 Angulo Decl. ¶11 (28 TTABVUE 32-33) (improperly designated confidential).
42 Angulo 30(b)(6) Dep., p. 93 (24 TTABVUE 268).
43 Angulo 30(b)(6) Dep., p. 94 (24 TTABVUE 269).
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Respondent’s televisions.44 The black bar detection feature “eliminate[s] the lighting
behind the black bars that are in the top and bottom [of the screen] to create a true
cinema-like experience in the home environment.”45 “[T]he CINEMAWIDE TVs
themselves eliminated the black bars because of how the TV, the physical TV, was
designed. … And that really was the inspiration for what then became a black bar
detection feature that was available on our mainstream line of televisions.”46 “And
really thinking back - - to the success that we had with that brand [CINEMAWIDE],
it just made perfect sense.”47

44 Angulo Discovery Dep., pp. 63-65 (24 TTABVUE 96-98); Angulo 30(b)(6) Dep., pp. 184-185
(23 TTABVUE 420-421) (improperly designated confidential) (the practical steps that
Respondent took to resume use of CINEMAWIDE included “[d]iscussions that I had with my
product development team as early as the summer of 2018.”). However, there are no
documents corroborating Angulo’s testimony regarding the 2018 meetings. Angulo Discovery
Dep., p. 66 (24 TTABVUE 99); Angulo 30(b)(6) Dep., pp. 185-188 (23 TTABVUE 421-424)
(improperly designated confidential).
In its Motion for Summary Judgment, Petitioner stated “[b]eginning in Spring 2019,
[Respondent] had discussions about naming a “black bar detection” feature on its then-
current televisions the “CINEMAWIDE black bar detection feature” (citing Angulo 30(b)(6)
Dep. pp. 58, 61-63 and 182 (23 TTABVUE 294, 297-299, and 418) and Angulo Discovery
Dep., pp. 40, 46, and 54-55 (24 TTABVUE 73, 79 and 87-88)). Petitioner’s Motion for
Summary Judgment, p. 12 (23 TTABVUE 14). Those citations to the record refer to Angulo’s
testimony regarding when Respondent first used CINEMAWIDE to identify the black bar
detection feature incorporated into its televisions, not when Respondent began discussing
using CINEMAWIDE to identify the black bar detection feature.
45 Angulo Discovery Dep., p. 39 (24 TTABVUE 72). See also Angulo Discovery Dep., pp. 47-48
(24 TTABVUE 80-81) (Because the lighting behind LCD television screens is always on, you
may have light leakage from the top and bottom of the screen. “So black bar detection will
instinctively detect that there is no content there. It will eliminate the lighting at the top and
bottom of the black bar placing all the focus and emphasis on the content itself.”).
46 Angulo Discovery Dep., p. 57 (24 TTABVUE 90).
47 Angulo Discovery Dep., p. 65 (24 TTABVUE 98).
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Respondent first used CINEMAWIDE to identify the black bar detection feature
of Respondent’s televisions in the spring of 2019.48 We reproduce below Respondent’s
specimen supporting its Section 8 Declaration of Use displaying the CINEMAWIDE
mark.

48 Angulo Discovery Dep., pp. 40, 55, 65, 90 (24 TTABVUE 73, 87, 98, and 123).
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Meanwhile, Respondent’s customer service team informed people making
inquiries regarding CINEMAWIDE televisions that the CINEMAWIDE television is
no longer available.49
C. Analysis
Respondent stopped manufacturing CINEMAWIDE brand televisions in 2013,50
and last distributed a CINEMAWIDE brand television in 2013.51 However,
Respondent anticipated the CINEMAWIDE brand televisions would have an active
market presence through 2015 inasmuch as Respondent maintains an active
CINEMAWIDE webpage to provide information to prospective purchasers and
existing owners. In addition, Carlos Angulo testified that Respondent itself would
make direct sales through 2015.
[Respondent] moves inventory on vizio.com for as long as it
is available, a window that can run 18-24 months from a
product’s manufacture. I recall that [Respondent] last
sought manufacture of XVT Models in Spring 2013.
[Respondent’s] manufacturing turnaround is generally
about two months long. Therefore, XVT Models
manufactured in Spring 2013 were made available for
purchase in late Spring/early Summer 2013 and were then
available for sale on vizio.com into 2015.52

49 Angulo 30(b)(6) Dep., p. 133 (25 TTABVUE 369) (improperly designated confidential) and
Exhibit 23 (24 TTABVUE 281-283) and Nading Declaration Exhibit J (24 TTABVUE 290)
(hearsay).
50 Angulo 30(b)(6) Dep., pp. 42 (24 TTABVUE 246). See also Angulo Decl. ¶18 (28 TTABVUE
35) (improperly designated confidential).
51 Angulo 30(b)(6) Dep., pp. 43-44 and 50-51 (24 TABVUE 247-248 and 254-255).
52 Angulo Decl. ¶18 (28 TTABVUE 35) (improperly designated confidential). See also Angulo
Rule 30(b)(6) Dep., pp. 182-183 (23 TTABVUE 418-419) (it is common practice for products
Respondent introduces to have a 12-18 month marketing window).
In note 26 above, we discussed why we would not consider this declaration testimony to
contradict Angulo’s Rule 30(b)(6) deposition testimony regarding when Respondent last
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It is reasonable to infer that if Respondent would make direct sales into 2015 so would
its retailers.53 We do not consider sales by retailers after 2015 to be bona fide use of
the mark in the ordinary course of trade inuring to Respondent’s benefit inasmuch as
Respondent’s typical marketing cycle is 12 to 18 months after the product’s launch.
Under the circumstances presented in this case, sales after Respondent’s typical
marketing cycle would not create the residual goodwill necessary to avoid
abandonment. See Societe des Produits Marnier Lapostolle v. Distillerie Moccia
S.R.L., 10 USPQ2d 1241, 1244 n.5 (TTAB 1989) (rejecting the concept of residual
goodwill) and Parfums Nautee 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.”). Compare Am. Motors Corp. v. Action-Age, Inc., 178 USPQ
377, 378 (TTAB 1973) (residual goodwill exists based on prior renown of the mark,
the large number of vehicles still on the road, opposer’s activities in supplying parts

distributed a CINEMAWIDE television. We now consider this declaration testimony,
however, for Respondent’s consideration of how long a particular product has an active
market presence rather than for its last distribution date. In this instance, Angulo’s
testimony declaration does not contradict his Rule 30(b)(6) deposition testimony. In this
regard, we note Petitioner referred to this testimony in its brief. Petitioner’s Brief, p. 7, (23
TTABVUE 9).
53 The overwhelming majority of sales of Respondent’s CINEMAWIDE televisions are
through retailers. Angulo Decl. ¶17 (28 TTABVUE 34) (confidential).
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and accessories to owners of the vehicles, and the use by dealers of mark portions of
their corporate or business names and use of the mark on signs on their premises).
However, we are not relying on residual goodwill in our determination that
Respondent did not stop using CINEMAWIDE with no intent to resume use. As
indicated above, Respondent anticipated the CINEMAWIDE brand televisions would
have an active market presence through 2015 in part through sales by unrelated,
independent retailers. Thus, we have found that consumers would associate
CINEMAWIDE televisions with Respondent through 2015.
Respondent’s sale of CINEMAWIDE televisions to unrelated, independent
retailers in 2012 and 2013 and the subsequent sales by retailers through 2015 does
not divest Respondent of its trademark rights in CINEMAWIDE since sales by
unrelated, independent retailers serve as the conduit through which Respondent’s
products are distributed to consumers. The retailers sell the television in
Respondent’s packaging bearing Respondent’s registered trademark with a clear
indication that Respondent is the source of the televisions. The effect of this process
does not confuse consumers as to the source of the goods or obliterate the distinction
between the retailer and Respondent. See 3 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 17:15 (5th ed. 2021):
[T]he primary emphasis should be on the degree to which
customers still recognize the mark, for it is this which will
result in a likelihood of confusion. Consumers know
nothing of the state of mind of the former trademark user,
but they may well mistakenly think that a new use of that
mark by another is a revival of the brand by the former
user. While the state of mind of both the former user and
the purchasing public are both legally relevant under the
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Lanham Act, in a close case, the state of mind of the public
should prevail.
Based on Respondent’s marketing cycle, Respondent’s use of CINEMAWIDE for
televisions had ceased by the end of 2015,54 and did not resume until the spring 2019,
when Respondent used CINEMAWIDE to identify the black bar detection feature of
Respondent’s televisions.55 That is more than three years of nonuse.
However, during the period of nonuse in the summer/fall of 2018, Angulo met with
his product development team and began discussions about using CINEMAWIDE to
identify the black bar detection feature of Respondent’s televisions.56 The black bar
detection feature offers the same movie viewing experience as the previously sold
CINEMAWIDE televisions.57 As Mr. Angulo testified, it made perfect sense to use the
CINEMAWIDE trademark to identify the black bar detection feature of the new
televisions because it is the same feature that made the CINEMAWIDE televisions
successful.58
This use continues to support use in connection with the identified goods because
it identifies the same essential feature of Respondent’s televisions such that

54 See also Angulo Discovery Dep. p. 139 (24 TTABVUE 172) (as of 2016, Angulo did not know
whether CINEMAWIDE televisions were sold).
55 Angulo Discovery Dep., pp. 40, 55, 65, 90 (24 TTABVUE 73, 87, 98, and 123).
56 Angulo Discovery Dep., pp. 63-65 (24 TTABVUE 96-98); Angulo 30(b)(6) Dep., pp. 184-185
(23 TTABVUE 420-421) (improperly designated confidential).
57 Angulo Discovery Dep., pp. 39 and 57 (24 TTABVUE 72 and 90). See also Angulo Discovery
Dep., pp. 47-48 (24 TTABVUE 80-81) (Because the lighting behind LCD television screens is
always on, you may have light leakage from the top and bottom of the screen. “So black bar
detection will instinctively detect that there is no content there. It will eliminate the lighting
at the top and bottom of the black bar placing all the focus and emphasis on the content
itself.”).
58 Angulo Discovery Dep., p. 65 (24 TTABVUE 98).
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prospective purchasers are likely to perceive the CINEMAWIDE feature as
originating from the same source as the CINEMAWIDE televisions.
A change in the kind of goods or services marketed under
the trademark is not an abandonment of the trademark
owner’s priority if the new goods or services are sufficiently
related to the original goods or services such that
prospective purchasers are likely to perceive the new
product as originating from the same source as the original
product.
RESTATEMENT THIRD, UNFAIR COMPETITION § 30, comment b (1995). See also
3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 17:23 (“A change of use
from one product to another will not constitute abandonment if the products are
closely related.”).
To the extent CINEMAWIDE is more in the nature of a mark associated with a
primary or integral component or feature of the television, consumers still may
perceive it as indicating source as to the entire product. See In re Petroglyph Games,
Inc., 91 USPQ2d 1332, 1334-36 (TTAB 2009) (goods in application accurately
identified as computer game software where specimen showed that mark was
identifying a feature of the software goods); In re Dell Inc., 71 USPQ2d 1725, 1729
(TTAB 2004) (although the mark QUIETCASE appears in a bullet listing of
information about the product consumers will recognize it as a trademark for the
computer hardware). Cf. Linville v. Rivard, 41 USPQ2d 1731, 1737 (TTAB 1996)
(“[T]here was no abandonment or break in the chain of use merely because use of the
mark was shifted from one line of goods to another similar line.”) (citing Sands,
Taylor & Wood Co. v. Quaker Oats, 978 F.2d 947, 24 USPQ2d 1001 (7th Cir. 1992)
(the change of use of the mark THIRST-AID from soft drink syrup and ice cream
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toppings sold to soda fountain retail outlets to use of the mark on ice cream toppings
for sale to institutions does not result in abandonment of the mark); Lucien Picard
Watch Corp. v. Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970)
(mark not abandoned for key cases, wallets, billfolds and eyeglass cases based on its
continued use for money clips, jewelry boxes, memo pads and notebooks)), aff’d on
other grounds, Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998);
E. I. du Pont de Nemours & Co. v. G.C. Murphy Co., 199 USPQ 807 (TTAB 1978)
(“There have been a number of decisions holding that a change in the nomenclature
of a product, the formulation or the primary purpose of a product, or even a change
in a type of product does not constitute an abandonment of the mark used
therewith.”); E. I. du Pont de Nemours & Co. v. Big Bear Stores, Inc., 161 USPQ 50,
52 (TTAB 1969) (“The mere change of the use of a mark from one product to another
variety thereof cannot constitute abandonment of the mark.”).59
We find that Respondent did not stop using CINEMAWIDE with an intent not to
resume use and, therefore, Respondent did not abandon CINEMAWIDE.
Decision: We deny the petition for cancellation.

59 Thus, we disagree with Petitioner’s contention that Respondent’s use of CINEMAWIDE to
identify the black bar detection feature of Respondent’s televisions is “a new and separate
use with a new date of first use.” Petitioner’s Motion for Summary Judgment, p. 24 (24
TTABVUE 25).